Powell Gilbert and Carku invalidate NOCO patent in Amazon takedown dispute

Shenzen Carku Technology is once again free to sell its products on Amazon and in the UK, after the High Court struck down a patent held by the NOCO Company. Shenzen initiated invalidation proceedings following a slew of takedown requests from NOCO to Amazon regarding its listing of Carku's jump-lead products.

16 September 2022 by Joshua Silverwood

NOCO, Carku Litigation began between NOCO and Carku after the defendant NOCO used Amazon's customer protection features to have a number of jump-lead products removed from its storefront. ⒸSirichai/ADOBE STOCK

A recent ruling handed down by the UK High Court has invalidated NOCO’s patent GB 22 57 858, after Chinese company Carku issued invalidation proceedings in a dispute over battery-powered jump leads for cars. The patent protects a special technology for battery-powered jumper cables (case ID: HP-2020-000018).

Carku also brought a further claim for damages, following NOCO’s request for Amazon to delist its products due to claims of patent infringement.

Shortly after, the US company NOCO counterclaimed for patent infringement and asserted that the complaints made to Amazon did not constitute threats. In NOCO’s view, it could justify the complaints on the basis that GB 858 was valid and infringed, with the latter claims based on the doctrine of equivalence. On the side of Carku, its invalidity attack was based on three pieces of prior art named Krieger, Richardson and Projecta.

Carku retains its products

The judge held that GB 858 is invalid for obviousness over the prior art Projecta and Richardson. However, he rejected the invalidity attack over the third piece of prior art. He also concluded that, should the court have found the patent valid, the delisted Carku products would in most cases not have infringed the patent.

Furthermore, presiding judge Richard Meade found that NOCO’s communications with Amazon constituted actionable threats and were not justified. Meade concluded that the court should launch an inquiry into the damages that NOCO should pay to Carku.

Unique in the UK

The UK proceedings come after a series of disputes between Carku and NOCO, in which the latter company waged a two-year campaign to use Amazon’s consumer protection features to remove any infringing product listed on the store. The bulk of the takedowns took place mostly between 2020 and 2022, during the height of the COVID-19 pandemic. Representatives for Carku argue that this factor significantly exacerbates the damage incurred to its business.

Carku reached out to Amazon which, according to Carku’s legal advisors, was unwilling to alter its product removal policy. As such, Amazon would only reinstate the products following a full declaration of non-infringement.

Simultaneously, the court stayed another case regarding a non-infringement dispute concerning a Carku product distributor, Ring, pending the outcome of Carku’s dispute with NOCO.

This is the first UK judgment on the merits which considered whether a takedown request, such as that sent by NOCO to Amazon, constituted an actionable threat under section 70 of the Patents Act 1977. Until now, the courts have applied decisions related to this specific case law only to interim proceedings. JUVE Patent has not yet had confirmation regarding whether NOCO intends to appeal the judgment.

Over to Germany

The UK proceedings are part of a series of global litigation. NOCO is seeking to defend its patents across multiple jurisdictions. For example, in Germany, another Carku distributor RDI has brought a claim of non-infringement against NOCO at the Düsseldorf Regional Court (case ID: 4a O 77/21).

At the same time, there are similar proceedings ongoing in both the US and Canada. These concern multiple distributors of Carku products, as well as similar infringement and non-infringement proceedings brought about as a result of NOCO’s take down requests.

Ari Laakkonen, anti-suit injunctions

Ari Laakkonen

On 29 August, the US International Trade Commission ruled in favour of electronics company Gooloo in a patent infringement case involving a similar battery-powered jump-starter technology. However, the ITC dismissed all of NOCO’s claims against Gooloo, including a request for Gooloo’s withdrawal from the US market.

It also rejected a request for an injunction which would halt the sale of products that allegedly infringed NOCO’s patents.

Carku relies on Powell Gilbert

London-based IP boutique Powell Gilbert represents Carku in the UK, led by partner Ari Laakkonen.

According to the judgment, Amazon relies on Hogan Lovells in the UK. Full-service firm Taylor Wessing represented NOCO, with Chris Thornham the lead partner in the case. Based on JUVE Patent information, this is the first time that Taylor Wessing’s patent team acted for NOCO. However, JUVE Patent cannot confirm the full team of litigators on NOCO’s side, although barristers from leading set 8 New Square were also present for NOCO.

For the defendants, junior barrister Edward Cronan, who is often seen alongside Powell Gilbert, appeared for Carku. Although Hogarth Chambers is predominantly a chancery set, its barristers are becoming increasingly visible in patent proceedings. Barristers from 11 South Square appeared for both the plaintiff and the defendant. UK law firms regard the set highly, especially in cases concerning telecommunication and electronics technology.

For Shenzen Carku
11 South Square (London): Hugo Cuddigan
Hogarth Chambers (London): Edward Cronan
Powell Gilbert (London): Ari Laakkonen (partner); associates: Peter Fitzpatrick, Jennifer O’Kane

8 New Square (London): James Abrahams
11 South Square
(London): Adam Gamsa
Taylor Wessing  (London): Chris Thornham (partner)

England and Wales High Court, London
Richard Meade (presiding judge)