PATENT CONTINUATION STRATEGIES FACE MAJOR THREAT

In Sonos v. Google, in a decision dated October 6, 2023 from the US District Court for the Northern District of California, the court held that Sonos’ utility patent was unenforceable for prosecution laches based on “unreasonable and inexcusable delay”.  The utility patent was the latest in a long line of continuation applications filed by Sonos that claimed a priority date going back to 2006.  The 55 page opinion delved extensively into the technology of the patent, and the history of the law of prosecution laches.  Part of the court’s reasoning was based on Sonos’ alleged introduction of new matter in the asserted patent, although that was subject to some dispute. 

I can do no better than provide a link to the Patently-O story that has an extensive discussion of the case.  The post also has a link to the actual opinion from the district court.  You may also find of interest the posted comments, the vast majority of which were very critical of the decision, and many of which criticized the judge, William Alsup, who was characterized as an anti-patent judge.

Long story short, the decision does raise into question the very standard practice (at least in my experience) of filing continuation applications while waiting to see if a competitor later introduces a product which could be covered by a newly drafted claim.  Infringers are clever, especially in design patent practice, in making a few changes here and there in their products in an attempt to circumvent a particular issued design patent.  The patentee can then try and craft a claim in a continuation application to cover the new knock-off. Importantly, in order to preserve priority, such a claim must have a basis in the originally filed application, i.e., no new matter may be introduced in the patent being asserted.  Stated another way, the claim to the new knock-off must have written description support in the priority application.  

The Sonos case will no doubt be appealed to the Federal Circuit and will be closely watched by both utility and design patent practitioners.  I expect that a slew of amicus briefs will be filed in order to support long standing continuation practice. 

As a personal footnote, the Sonos case cites In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) as “the decision in which the Federal Circuit applied prosecution laches for the first time”.  I have the unwanted distinction of having represented the applicant Bogese. The facts in this case are very different, and arguably more egregious, that those in the Sonos case.  A major distinguishing fact is that in Bogese prosecution laches was applied by the USPTO, while in Sonos it was applied by a federal court with equitable powers.  Judge Pauline Newman in Bogese wrote a vigorous dissent, saying essentially that the USPTO had no power to do what it did.   

p.s.  GM has filed its brief in the en banc case of LKQ v. GM involving the critical issue of design patent obviousness.  I will post comments with links to the GM brief and amicus briefs as soon as they are filed.