by Dennis Crouch
Impact of Sonos on Patent Prosecution: The recent Sonos v. Google decision threatens to grind to a halt, or at least significantly restrict, a once-common patent prosecution strategy – keeping continuation applications pending for years to obtain new claims that cover marketplace developments. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023). In Sonos, Judge Alsup found Sonos’s patents unenforceable due to prosecution laches, despite Sonos diligently prosecuting related applications for 13 years; serially filing a continuation with each allowance. The decision casts doubt on the viability of pending continuation applications over a long period, even absent any evident applicant delay — especially in situations where new claims are drafted in response to emerging technologies or market demands. Although claim fluidity remains an integral principle in patent law, Sonos adds considerable viscosity to the practice. The viability of continuation strategies, especially in rapidly evolving technologies, may face a reckoning in the wake of Sonos. The patentee will certainly appeal, but it is not clear that the Federal Circuit will change the path in any way.
Understanding Claim Fluidity: One feature of the US patent system is claim fluidity. Most claims are amended during prosecution. Most patents claim priority back to an earlier filing with different claims. Claims can later be amended during a post-grant proceeding. And, to make things clear the reissue state permits a patentee to alter the claims to cover in situations where the original patent claims “more or less than he had a right to claim in the patent.” 35 U.S.C. 251.
Although reissue applications are always available during the life of a patent, they have major downsides, including the two year post-grant timeline for enlarging patent scope. Id. The alternative approach followed by most is to “keep a family member alive” in areas involving technology important to the patentee. As one family-member patent is about to issue (or be abandoned), the patentee makes sure to file a continuation application with a new set of patent claims and claiming priority back to the original filing documents.
In developing that new set of claims, the patentee will typically consider the marketplace. What market developments have occurred since the original filing date? Some of these developments may be internal — looking at their own current and future product line. Some of the developments will also be external — looking to see how others have begun using aspects of the disclosed invention. We then craft claims that cover these new developments; being wary to ensure that the patentee has “a right to claim” this new coverage. This right to claim is ordinarily measured by the doctrines of enablement and written description and during prosecution we also look to the prohibition on new-matter under 35 U.S.C. § 132.
Sonos v. Google: Judge Alsup’s new decision in Sonos v. Google suggests that this common approach should come to an end. In particular, the court concluded that Sonos’ asserted claims were unenforceable because they had been added to a continuation application filed 13-years after the original priority document in a way that was prejudicial to the behemoth Google.
The essence of this order is that the patents issued after an unreasonable, inexcusable, and prejudicial delay of over thirteen years by the patent holder, Sonos. Sonos filed the provisional application from which the patents in suit claim priority in 2006.
Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023). Judge Alsup goes on:
Trial brought to light what happened here. This was not a case of an inventor leading the industry to something new. This was a case of the industry leading with something new and, only then, an inventor coming out of the woodwork to say that he had come up with the idea first — wringing fresh claims to read on a competitor’s products from an ancient application. . . . It is wrong that our patent system was used in this way. With its constitutional underpinnings, this system is intended to promote and protect innovation. Here, by contrast, it was used to punish an innovator and to enrich a pretender by delay and sleight of hand. It has taken a full trial to learn this sad fact, but, at long last, a measure of justice is done.
Id.
The basic setup here is not simply a delay. Judge Alsup concluded that Sonos learned of a particular feature from Google (allowing a speaker to be in two different zones). And, that Sonos later filed a continuation application that included claims to the new feature. Meanwhile Google invested in the technology and launched its own products.
New Matter and Priority Claims: An odd aspect of the decision is that Judge Alsup concluded that the new feature constituted “new matter” that “[u]nder black letter patent law … necessarily sunk any claim of priority.” Of course, “new matter” does not actually tank priority claims. Rather, the priority question depends upon a proper claim and sufficient support as guided by the doctrines of enablement and written description. But Judge Alsup appears to have felt misled regarding the priority issue earlier in the case. At that prior stage, Google had failed to present certain evidence showing lack of priority. Judge Alsup seems to feel he was duped into accepting Sonos’ priority claim. As he put it:
Put another way, ‘I got a half a deck of cards’ and ‘I was not told the complete truth.’ . . . To repeat, the judge was not made aware in the briefing (or at the hearing, or otherwise until trial,) that this sentence had been inserted by amendment in August 2019. That, alone, would have been a red flag.
Id. The opinion shows Judge Alsup’s displeasure at feeling he was not given the full story by Sonos earlier in the case. He seems to take particular issue with Sonos relying on specification language that was added years later by amendment. He similarly did not fault Google for failing to discover the issue since the prosecution history is quite complex.
Potential Repercussions for Patent Prosecutors and Portfolio Managers: The case is obviously a major one that patent prosecutors and portfolio managers should consider. The decision suggests strongly that the common patent prosecution strategy of keeping continuation applications pending to obtain new claims may be disfavored – at least when done over a decade or more as well its use to obtain new claims covering market developments.
Diligence in Prosecution Not a Justification for Delay: Unlike prior cases such as Hyatt, the patentee was diligently prosecuting the patents during the entire period. However, the court found that diligence “does not render the delay any less unreasonable and inexcusable. Indeed, it renders the delay all the more unreasonable and inexcusable.” The court explained that Sonos “could have filed parallel applications with new claims covering the invention” and did not have to “run out its string of inert applications before turning to claim the invention that mattered.”
Patent Term and Prosecution Laches: The Hyatt and Lemelson cases adopted by the Federal Circuit focused on pre-1995 patent applications. The old system provided an incentive for delay during prosecution because the patent term of 17 years began running as of the patent issuance date. The result was the potential of greatly increasing the effective patent term. That incentive for delay no longer exists because post-1995 patents (like those of Sonos) have a patent term that runs from the non-provisional filing date. Thus, each day of delay ate into the Sonos patent term. There is some support for the idea that prosecution laches no longer applies in this new system because of the congressionally created limited term of 20 years that begins with the start of prosecution in a manner that is closely parallel to a statute of limitations. In recent cases, the Supreme Court has held that laches is not a proper defense to damages claims when a statute of limitations is in place. Still, Judge Alsup concluded that the change in patent term has no impact on the doctrine of prosecution laches.
The Future of Claim Fluidity and Patent Strategy: In the case, a jury had sided with the patent holder Sonos and awarded $32 million in back damages. Judge Alsup’s decision flips that verdict and also kills any plans Sonos had to exert its exclusive rights over the marketplace. While claim fluidity remains an integral feature of patent law, Sonos has added considerable viscosity to the system.
This feels like the typical anti-patent judicial activist judge. The arguments made are ridiculous for laches. That the applicant could have written the claims earlier therefore the claims are invalid because they waited too long to write the claims. Laches is founded on the principle of an intentional delay. But how is filing continuations an intentional delay? Particularly when the specification itself is public. Key to laches was that they were “submarine patents” in that they were not public so there was no notice. But the specification was public.
And, as someone who has done many patent landscapes for clients who are considering products, if one finds claims similar to the product and there are continuations pending, then part of due diligence is to look through the specification.
This is just typical anti-patent judicial activism of trying to reduce the patent grant in any way possible. Go to the legislative branch if you don’t like patents and stop making up laws.
And, I have been paid in the six-figures to perform clearances for companies buying other companies. Standard practice to look through the disclosure if allowed claims are anywhere near close and there are pending continuations. Probably you could get sued if you didn’t.
Plus, the other thing was that the idea was that in laches the goal was to extend the number of years of the patent by intentionally delaying prosecution at the USPTO. The idea was you have these secret disclosures and you want to delay waiting for products to be developed and then get patents and sue.
Here, there is a priority date that can’t be extended. The disclosure is public. There is notice. Additionally, I’d add that continuations are now a counter to IPRs and validity in that patent law is rapidly changing and your claims are no assessed under the law under which they were written but the current case law. So, often, continuations are written to account for the change in patent law.
The judge is just a typical egomaniac who has decided patents are bad and will do anything to punish patents. The judge doesn’t care about applying the law. Just another dirty judge. Our system is crumpling apart. “Where have you gone Paul … ine Newman our lonely eyes turn to you.”
OT, but might be of interest…
Behind a paywall, but the gist is the pullback as has been hinted at by Night Writer (and as has been foretold by Peter Zeihan):
link to nytimes.com
I have done more than hinted at it and said it will come. At least cutting back quite a bit. And that it could be swift.
Correct / you have done more than hint.
Right? How much money does Google have, and their attorneys missed the addition? The judge shifted the burden.
+1 Yup. Good way to put it.
I’m interested to see how this turns out. I’m sure like most of you, I’ve got more than a few clients who file continuation applications to keep something pending in case competitors start getting close with their products. I warn clients that they always have to keep enablement, written description, and new matter issues in mind when seeking to obtain claims that would cover a competitor’s new product.
Alsup’s thumb is heavy on the scales of Justice.
And (apologies again to Wt) people wonder why jurisdictions that are not anti-patent are favored?
(As to anti-patent leanings, the usual suspect — looking at you, Malcolm — weigh in with their inappropriate feelings and false “0h N0es, Tr011s” narratives).
As to “this is new matter” — even though it is shown to NOT be new matter, why let facts get in the way of a desired Ends?
What could go wrong with that?
“Still, Judge Alsup concluded that the change in patent term has no impact on the doctrine of prosecution laches.”
That is likely correct. You’d have to see the legislature more directly legislating the equity question out of existence imo. Tho it might be harder to show now.
Except, no actual prosecution laches here — again, Alsup does not get to make up law that is not there, as it is beyond silly to make up out of whole cloth the notion that all possible continuations must be filed ‘immediately’ as opposed to being filed under the actual — and well-known — rules.
“The viability of continuation strategies, especially in rapidly evolving technologies, may face a reckoning in the wake of Sonos. ”
Pressing x to doubt.
Still, the argument by the court is a fair common one made by many people. Tho I doubt it will hold up ultimately.
Is that “fair common one” reflecting that 7% poll number in the next thread?
Well it’s 7% among the polled people (who are probably almost all patent professionals of some sort). In the general population I would guess it’s higher, at least 20%+
Not sure that you recognize the collision in the point that you seem to want to make.
Here’s a hint:
Anyone can have an opinion.
Having an informed opinion is always better.
Well, the addition of the “new matter” wasn’t wholly without basis. It came from appendices to the provisional that the parties agreed disclosed the invention, but was not repeated ipsissimis verbis in the spec of the subsequent non-provisional, but was incorporated by reference.
That’s according to Hoyle.
But, the additional wrinkle is that one sentence was deleted from the appendices on filing to avoid any questions of on-sale/public use prior art. That sentence allegedly discloses the feature–“overlapping zone scenes”– for which the spec amendment was designed to provide claim support.
Kind of a bizarre fact scenario unlikely to repeat, even in useful analogs.
That said, I’m not sure I have a problem with curtailing an excessive number of and belated voluntary continuation filings. I am a current practitioner of filing one or two in the few years following the grant of the original application and am not worried about that practice in light of this.
Bizarre is right.
I second that. For me, the overall vibe of the decision was Alsup concluded that, at least given the totality of the circumstances, Sonos committed inequitable conduct somewhere along the way during prosecution. But for some reason Alsup seems to have taken it upon himself to shoehorn Sonos’s misconduct into a prosecution laches framework instead. Maybe Alsup just couldn’t be bothered with carrying out the detailed and extensive inequitable conduct analysis.
… “I know it when I see it”
(Reminiscent of, “the only valid patent is one that has not yet appeared before us.”)
So, rather than punish just the offender for their offense, punish all patentees for something you find offensive?
Efficient Infringers and established powers have always viewed patents (in the hands of others) as a threat and “something [they] find 0ffensive.”
“That said, I’m not sure I have a problem with curtailing an excessive number of and belated voluntary continuation filings.”
Great. It’s not up to you, and what exactly is “excessive” or (legally) belated?
It’s also just not up to Alsup.
People, do we need to go back and revisit history for the (botched) Office ultra vires attempt at Claims and Continuations power grab?
Of course it’s not up to me, didn’t imply that it was.
I just won’t feel like it’s a major injustice if the continuation practice going out past say, 10 years, or 5 voluntary continuations is equitably curtailed.
It’s kind of amusing and also slightly disturbing that Alsup, as a self-confessed amateur technologist, tries so hard to reach some kind of techno-legally correct result in his IP cases.
Even the patent-friendly judges in various jurisdictions don’t attempt to do that. I think, overall, it’s a mistake.
FB,
Sorry, but you did imply that (and you did it again in your immediate reply above). That you feel compelled to assert “won’t feel it’s a major injustice” is simply NOT a feeling that aligns with the law, nor the reasoning behind the law. You use the word “equitably” – but it is untethered to anything but your ‘feelings.’
No thank you.
As I noted, it would do you well to revisit the ultra vires attempted power grab in the Office’s Claims and Continuations debacle.
This is BS. I do freedom to operate opinions. I’ve done opinions where I billed in the six figures for purchasing companies.
Standard practice to have a look at the provisionals if continuations are pending. Those are part of the disclosure.
The judge is filth.
To keep something pending at the PTO throughout the 20 year life of an important patent is nothing out of the ordinary either at the EPO where there is no limit to the number of successive generations of divisional that one can file, as thought provident. That common practice is not the mischief here.
What is important, I would suggest, is to be able to give your client an FTO opinion with a good level of confidence, any time after the 18 month A publication of the original aplication as filed. The mischief is (as so many commentators to this thread have already pointed out) is for an Applicant to file a continuation (not a C-I-P) with a specification surreptitiously souped up with extra disclosure calculated to be useful for threatening those competitors already on the market. Is such attorney conduct sanctionable, I wonder.
Presumably US FtF law includes some sort of “right of continued use” provision that comes to the aid of those whe were already on the market when the new matter was added to the specification filed at the PTO by their competitor?
your position is a little misleading as this could not have been a continuation, but rather a continuation in part. This does not seem to impact continuation practice at all. Rather it falls squarely within CIP law.
This development underscores the failure of the peripheral claiming schema. No one agrees on the metes and bounds of a claimset. And the Office will not allow the full scope of the invention without ten plus years of protection and appeals. Inventors are giving away the entity of their discover, in exchange for endless arguments over thir rights. It’s the opposite of SECURING to inventors the exclusive right to their discoveries.
We need a better system.
*prosecution and appeals
“No one agrees on the metes and bounds of a claimset”
That’s not true. Not even close. And even if it were true, so what? I don’t know exactly where the lines are between my city and the neighboring ones but I know I’m not in the neighboring cities now.
Put another way, there is evidently enough understanding of the metes and bounds to encourage and enable a lot of filing and licensing activity (far, far more of that activity than litigation and patent invalidation).
Determine the exact “metes and bounds” of any legal document is often going to be contentious, especially when what is being defined is an abstract “intellectual property” right, when there is substantial money involved, and when there are lawyers trying to muddy the waters for their own advantage. The much greater area for concern is NOT the fuzziness of the “metes and bounds” of traditional patent claims but the encroaching of patent rights into subject matter where the patent system does not belong, i.e., information and logic.
+1 to Josh.
His understandable hissy fit notwithstanding, Alsup got this wrong and will be overturned at either the CAFC or the SCOTUS.
As this decision must be.
That said, and though I’m a staunch defender of patent rights, amendments to the spec should be barred.
You shouldn’t get to say later what you didn’t say originally.
The case should have been decided based on lack of priority for the new matter. The patent attorney should be sanctioned for filing the case as a continuation rather than a CIP. The statutory framework clearly supports filing a chain of continuations. Congress acted on the issue of prolonged patent term by limiting the duration of a patent to 20 years from the earliest, non-provisional filing date (plus any PTA). The judge’s comments do not logically follow “It is wrong that our patent system was used in this way. … [I]t was used to punish an innovator and to enrich a pretender by delay and sleight of hand. It has taken a full trial to learn this sad fact, but, at long last, a measure of justice is done.” The only “sleight of hand” was the introduction of new matter. The alleged infringer did not discover that the applications were continuations until trial. The alleged infringer discovered at trial that new matter was added. Thus, attacking continuation chains based on failing to identify a case as a CIP does not logically follow and certainly does not follow the law nor Congress’ clear intent with the statutory 20 year term.
If you look at the file history though (maybe y’all should do that?) it’s pretty clear that all that the amendment did was add subject matter that was already disclosed in the provisional application (which was incorporated by reference). I don’t see a problem with that?
Plus one, FW facts should matter.
+1
+1
“The alleged infringer did not discover that the applications were continuations until trial. The alleged infringer discovered at trial that new matter was added.”
Wow, that is some high-priced incompetence.
Except it was not new matter as noted immediately above your comment.
But don’t worry — the judge here will simply excuse the miss of the facts to get at his desired Ends.
+1
Right? Poor, poor Google! They clearly could not afford a thorough review.
Wow Dennis, lots of ink over a mere district court decision?
Or are you concerned that now, without Judge Newman around, the Federal Circuit might get this one wrong?
My money is on the CAFC not wishing to upset long-standing practice (the approach taken when it ruled that continuations filed on the day the parent patent issued were not filed to late, even though the statute is pretty clear that that IS too late), and instead finding a way to invalidate via other means, like written description or lack of enablement.
To say that this post is odd is putting it mildly. Laches is an equitable doctrine. Judge Alsup got a close-up look at the whole picture and, based on all the facts before him, ruled that applying laches was appropriate here. It’s not clear why or how the Federal Circuit would take this case and use it to radically alter standard continuation practice. At least, it’s not clear from Dennis’ post why any above-the-board practitioner should be alarmed.
I agree. The amendment to the specification in this case makes this decision relatively narrow and limited to its facts (even if affirmed). Plus a Rule 36 affirmance has not precedential value at the Federal Circuit and so it is weird to get excited about a summary affirmance.
“Laches is an equitable doctrine. Judge Alsup got a close-up look at the whole picture and, based on all the facts before him, ruled that applying laches was appropriate here.”
Yeah but he applied it in a somewhat odd way here. And he doesn’t seem to have done a full balancing of the equities (or else D did not quote that part of the decision if he did write it out).
“based on all the facts before him,”
Except those that got in the way of his desired Ends, you mean, eh?
The patentee appears to have committed fraud on the patent office. Surely Sonos was sanctioned here, beyond merely having their case decimated? Again: they amended one of their “continuation” applications in 2019 to create written description support THAT DID NOT PREVIOUSLY EXIST. For whatever reason, Google did not discover this fraud until later in the case but there is zero indication that they sat on the information once it was discovered. Was this the only evidence that Sonos was t r o l l i n g Google? Would it matter?
“The opinion shows Judge Alsup’s displeasure at feeling he was not given the full story by Sonos earlier in the case. He seems to take particular issue with Sonos relying on specification language that was added years later by amendment.”
Gee, I wonder why a judge would “take issue” with such behavior.
“ The decision suggests strongly that the common patent prosecution strategy of keeping continuation applications pending to obtain new claims may be disfavored – at least when done over a decade or more as well its use to obtain new claims covering market developments.”
If you’ve got clear written description support in your specification, you will probably be on safe ground. If you need to amend your specification to create written description support that does not exist, then your attempts to sue people while relying on that newly added language will be very much “disfavored” (to nobody’s surprise).
Agree with much of this, and I’m curious to see how the Federal Circuit rules on this.
But I do take issue with this statement:
If you’ve got clear written description support in your specification, you will probably be on safe ground.
This really comes down to how creative and/or thorough the drafting attorney was. What normally happens (especially in cases involving technology that becomes standardized) is there’s some throwaway language in the specification to cover “concept X,” but what the original inventors did had nothing to do with “concept X.”
If the written description support is clear, then it’s clear. Picking and choosing from disparate laundry lists spread out across 200 pages of disclosure will often not be “clear”. On top of that, if the art is unpredictable there will almost always be enablement issues associated with practice (those sorts of specifications are actually much more useful for poisoning the well and creating prior art than they are for supporting later-filed claims).
^^^ you cannot have it both ways, you anti-patent lout.
It will be extremely interesting to see how the Fed. Cir. handles this. If they uphold this with a Rule 36 affirmance, it would make a serious mess out of patent law and portfolio management. On the other hand, I expect there will be lots of amicus briefs on both sides of this issue because some industries (e.g., pharma) rely heavily on this strategy. I’m expecting that this won’t be settle for a year or more due to the en banc and/or SCOTUS petitions that will follow after the first Fed. Cir. decision.
“ some industries (e.g., pharma) rely heavily on this strategy.”
Exactly which “strategy” are you referring to? The “strategy” where the specification is amended to create written description support and then the patentee sues relying on that newly create support and never mentions to the judge or anyone else that the written description for an asserted claim was added years after filing? That “strategy”? Because that “strategy” is not “heavily” relied on by any industry except maybe the patent anssertion entity “industry”.
^^^ baseless accusation, Malcolm.
Stop with the Efficient Infringer propaganda.
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