Emerald Lake Hills v. Amazon: Patent Infringement Dismissed Without Prejudice
Emerald Lake Hills, LLC asserted US11636413B2 against Amazon’s AWS Marketplace platform in the Western District of Texas. The plaintiff voluntarily dismissed all claims without prejudice just 106 days after filing, before Amazon had served an answer — leaving the door open for future enforcement action.
Pre-Answer Voluntary Dismissal in AWS Marketplace Patent Dispute
On March 4, 2024, Emerald Lake Hills, LLC filed a patent infringement action against Amazon.com, Inc. in the Western District of Texas (Case No. 1:24-cv-00233), asserting US11636413B2 against Amazon’s Web Services Marketplace platform. The case was assigned to Judge Robert Pitman, with Emerald Lake Hills represented by Timothy Devlin of Devlin Law Firm LLC and Amazon represented by Morrison & Foerster, LLP.
On June 17, 2024 — just 106 days after filing — the plaintiff filed a notice of voluntary dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(i), dismissing all claims without prejudice. Because Amazon had not yet served an answer or motion for summary judgment, no court approval was required; the dismissal was self-effectuating. The court subsequently closed the case and ordered each party to bear its own costs, expenses, and attorneys’ fees.
The speed of resolution — before any responsive pleading — is notable and consistent with pre-answer dismissals that often reflect ongoing licensing negotiations, claim reassessment, or tactical repositioning. The without-prejudice nature of the dismissal means Emerald Lake Hills retains the ability to refile substantially similar claims. What drove the decision to dismiss at this early stage is not apparent from the public record.
Filing to Voluntary dismissal in 106 days
106 days — resolved before any responsive pleading was filed
Voluntarily dismissed: what the without-prejudice ruling means for both parties
Rule 41(a)(1)(A)(i): self-effectuating pre-answer dismissal
Under FRCP 41(a)(1)(A)(i), a plaintiff may voluntarily dismiss an action without a court order by filing a notice before the defendant serves an answer or motion for summary judgment. Because Amazon had not filed either, the plaintiff’s notice terminated the case automatically — no judicial approval was required. The court’s closure order was administrative, not dispositive.
No court approval neededDismissed without prejudice — refiling remains possible
A dismissal without prejudice does not adjudicate the merits. Emerald Lake Hills retains the right to refile claims based on US11636413B2 against Amazon or other parties, subject to applicable statutes of limitations. A with-prejudice dismissal, by contrast, would bar refiling. The public record confirms the without-prejudice character, leaving Emerald Lake Hills’ enforcement options intact.
Claims can be refiledEmerald Lake Hills exits without conceding infringement
By dismissing without prejudice at the pre-answer stage, Emerald Lake Hills avoids any adverse merits ruling, preserves the patent’s validity, and retains future enforcement leverage. This posture is consistent with entities reassessing litigation strategy, pursuing parallel licensing discussions, or waiting for a more favourable forum or factual record.
Patent enforceability preservedAmazon avoids a merits fight — but exposure remains open
Amazon secured closure without expending resources on a full defence, and with no invalidity or non-infringement finding on the record. However, the without-prejudice dismissal means Amazon cannot claim res judicata protection. Future infringement claims based on US11636413B2 remain a live risk for the AWS Marketplace platform unless licensing or patent validity is resolved.
No res judicata protectionFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Emerald Lake Hills, LLC | Company | Patent assertion entity — holder of US11636413B2 (marketplace platform technology)Search in Eureka ↗ |
| Defendant | Amazon.com, Inc. | Company | Amazon.com, Inc. — global e-commerce and cloud services provider (AWS Marketplace)Search in Eureka ↗ |
| Plaintiff counsel | Timothy Devlin | Attorney | Counsel for Emerald Lake Hills, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Devlin Law Firm LLC | Law Firm | Representing Emerald Lake Hills, LLCSearch in Eureka ↗ |
| Defendant counsel | Austin Michael Schnell | Attorney | Counsel for Amazon.com, Inc.Search in Eureka ↗ |
| Defendant counsel | Brian Christopher Nash | Attorney | Counsel for Amazon.com, Inc.Search in Eureka ↗ |
| Defendant counsel | Regan Jeffrey Rundio | Attorney | Counsel for Amazon.com, Inc.Search in Eureka ↗ |
| Defendant law firm | Morrison & Foerster, LLP | Law Firm | Representing Amazon.com, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Robert Pitman | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s closure order confirms the dismissal operated automatically under Rule 41(a)(1)(A)(i) — no merits adjudication occurred. The without-prejudice character is legally significant: neither validity nor infringement of US11636413B2 was decided, and no estoppel or claim preclusion attaches. Amazon receives no declaratory protection. The cost-bearing order — each party pays its own — is the standard outcome for pre-answer dismissals where no fee-shifting motion was filed.
US11636413B2 — Digital Marketplace Platform Technology
US11636413B2 (application number US17/542351) was asserted against Amazon’s AWS Marketplace — a cloud-based platform enabling third-party vendors to list, distribute, and transact software and services. The patent relates to marketplace platform technology, likely covering aspects of how digital storefronts, vendor onboarding, or transaction orchestration are managed in a cloud-hosted environment. The specific grant date and claim scope are material to understanding the breadth of potential infringement.
AWS Marketplace is a strategically significant Amazon product used by enterprises to procure and deploy cloud software. Assertion of a marketplace platform patent against this product suggests the patent holder believes the core transactional or cataloguing architecture of AWS Marketplace falls within the claimed invention. For competing cloud marketplace operators — including those in SaaS, PaaS, and enterprise software distribution — this patent represents a potential enforcement risk worth monitoring closely.
Should you run an FTO against US11636413B2?
Any company building, operating, or acquiring a cloud-based software or services marketplace platform should treat US11636413B2 as a relevant clearance target. The fact that it was asserted against AWS Marketplace — one of the world’s largest enterprise software distribution platforms — suggests the claimed invention is interpreted broadly. Vendors, ISVs, and SaaS marketplace operators are all potentially within scope, and the without-prejudice dismissal provides no clearance.
PatSnap Eureka’s FTO Search Agent can map US11636413B2’s independent claims against your product architecture, identify design-around opportunities, and surface any continuation or related applications from the same patent family that may present additional exposure. Given the pre-answer dismissal, this is the right moment to conduct proactive clearance before any refiled action names additional defendants.
Run a freedom-to-operate analysis on US11636413B2 to assess your product’s exposure
Run FTO in Eureka →Similar Patent Disputes: Cloud Marketplace & SaaS Platform Cases
Cases involving cloud marketplace and SaaS platform patent assertions in the Western District of Texas and related federal courts — including pre-answer dismissals and early-stage enforcement actions.
What this case signals for the cloud marketplace IP landscape
Pre-answer dismissals in patent cases rarely signal true resolution — they often mark a tactical pause with enforcement still very much in play.
Without-prejudice dismissals preserve all future enforcement options
Companies operating in the cloud marketplace and SaaS distribution space should treat this dismissal as a deferral, not a resolution. US11636413B2 remains active and assertable. Product teams building or operating digital marketplace platforms should conduct FTO analysis against this patent before dismissal is misread as clearance.
Pre-answer dismissals often precede licensing or forum shopping
The 106-day window before dismissal — with no substantive motion practice — is consistent with parallel licensing negotiations or a plaintiff reassessing venue strategy. Western District of Texas remains an active patent litigation forum. Monitoring Emerald Lake Hills’ subsequent filings is advisable for any entity operating in the AWS Marketplace technology space.
Emerald v Amazon.com — key questions answered
A without-prejudice dismissal means no merits ruling was made on US11636413B2. Emerald Lake Hills retains the right to refile infringement claims against Amazon or other parties. No estoppel, res judicata, or invalidity finding attaches. The patent remains in force and enforceable.
Under FRCP 41(a)(1)(A)(i), a plaintiff may dismiss an action without a court order by filing a notice before the defendant serves an answer or motion for summary judgment. Amazon had not served either, so the plaintiff’s June 17, 2024 notice was self-effectuating, automatically terminating the case without judicial action.
US11636413B2 (application US17/542351) relates to marketplace platform technology. It was asserted against Amazon’s AWS Marketplace — a cloud-based platform for enterprise software and services distribution — suggesting the patent holder believed AWS Marketplace’s core architecture infringed the claimed invention. The specific claims at issue were not adjudicated.
The court ordered each party to bear its own costs, expenses, and attorneys’ fees. This is the typical outcome for a Rule 41(a)(1)(A)(i) pre-answer dismissal where no fee-shifting motion was filed. Neither party received a cost award, and no sanctions or exceptional case findings were made.
No. The without-prejudice dismissal provides Amazon with no res judicata or collateral estoppel protection regarding US11636413B2. Emerald Lake Hills — or any subsequent assignee of the patent — could refile substantially similar claims. Amazon should monitor the patent’s status and any continuation applications in the same family.
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