Sonos v. Google: A Decision Based on Ignorance of Patent Law That Must Be Overturned

“If the Federal Circuit allows these rulings to stand, it will not only upend patent practice, but it would require the USPTO to do something they are currently not allowed to do, which is limit the filing of continuation applications.”

sonosAn interesting tale of intrigue and woe is being written in the decade-long relationship between Google and Sonos. The most recent chapter ended with the district court finding the Sonos patents at issue in their patent litigation against Google were unenforceable due to laches because Sonos had the audacity to file a continuation and seek claims supported by—and actually incorporated from—an earlier filing. According to the district court, because Sonos could have filed those claims in the continuation earlier, that created a laches defense for Google.

Obviously, the district court is wrong. The filing of a continuation cannot legitimately—either legally, practically or rationally—lead to a finding of laches. And for the district court to base such a ruling on the fact that Sonos could have filed the claims earlier shows a complete lack of understanding of basic patent law fundamentals.

Of course Sonos could have filed the claims in the continuation earlier; everyone who files a continuation could have filed the claims they seek in the continuation application earlier! A continuation—by definition—cannot present new matter and must be entirely supported by the earlier priority document. If you couldn’t have made the claims earlier, it wouldn’t be a continuation. So, this ruling is objectively wrong, and there can be no legitimate debate.

And let’s not forget that the kind of limitation on the filing of continuation applications that the district court sees as the appropriate rule is strictly forbidden. The U.S. Patent and Trademark Office (USPTO) continues to be subject to an order preventing the Office from limiting the number of continuations an applicant can file. Even if the USPTO wanted to adopt this ruling, it would have to refuse.

Not a Zero-Sum Game

How can something you have a right to do even after you did it lead to a finding of improper delay that properly supports a finding of laches? In this case, Sonos could have legally filed a continuation under the statute and rules for another eight years after they did. It is simply not appropriate to chastise, vilify or punish someone for doing something they have an absolute right to do during the time frame action was taken.

It seems that the district court did not like the fact that Sonos filed the continuation application in question 13 years after the filing of the original priority document, which was a provisional patent application. But it isn’t like that filing of the continuation creates a new patent term—I sure hope the district court knew at least that much. And, while the filing of the provisional patent application does not start the patent term clock running, the patent term does start for the parent and any continuation filed associated with the parent as of the date the parent application was filed. This means Sonos gave up 12 years of patent term by waiting to file the continuation plus the time it took to obtain the patent from the continuation application. Therefore, by the time Sonos obtained the patents from the continuation application, they had only seven years and eight years of patent term, respectively.

It is not laches to file a continuation during the pendency of a parent application—it is a matter of right. The check on the patent owner is that at no time prior to the filing of the continuation are those claims owned, so there are no exclusive rights. And the diminishing patent term acts as an incentive to file sooner rather than later, but there is nothing evil, underhanded or even mischievous about filing a continuation during the life of the parent. The filing of a continuation during a period of unbroken priority is fundamental to patent practice.

District Court Says ‘Fraud on the Court’

In May 2023, the jury returned a verdict in favor of Sonos for infringement of one of Sonos’s grouping claims and determined that Google did not prove the patent claims to be invalid. After Sonos’ victory, however, the district court pulled the carpet out from under Sonos finding the Sonos patents unenforceable for prosecution laches due to the fact that Sonos could have filed its 2019 claims earlier, and separately holding that the specification amendments made in 2019 were “new matter.” In fact, the district court concluded that Sonos had committed “fraud on the court.”

These separate district court rulings are incongruous. It is not possible for Sonos to have earlier sought the claims (the predicate of the laches ruling) and simultaneously have added new matter in the continuation. If what was amended into the continuation application was new matter, then it would be impossible for Sonos to have earlier made the claim because there wouldn’t have been support. And if there was support for Sonos to have made the claim earlier that would mean the terms were sufficiently supported in the provisional. Simply stated, at least one of these rulings must necessarily be wrong because both cannot be simultaneously true.

Moreover, how could the judge honestly believe there was fraud on the court? It is well-established, black-letter law that “[w]hen a document is incorporated by reference into a host document, such as a patent, the referenced document becomes effectively part of the host document as if it were explicitly contained there.” Telemac Cellular Corp. v. Toop Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001). Fraud warranting a finding of inequitable conduct can’t possibly exist simply because the judge doesn’t understand patent law.

Obviously, it is well established at every level that something disclosed in an earlier filed application that is incorporated into and claimed in a continuation application cannot be new matter—it is as if it were explicitly there all along. What Sonos did is perfectly legal and nothing different than what tens of thousands of applicants have done hundreds of thousands of times—or more. As long as priority remains unbroken, and there is no specific disclaimer, a continuation can be filed at any time during the term of the original priority filing and new claims using different claim language can be both pursued and obtained. See Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1078 (Fed. Circ. 2005).

The district court rulings on laches and apparent conclusion that it is inappropriate to file a continuation seeking new claims will be overruled—they have to be overruled. If the Federal Circuit allows these rulings to stand, it will not only upend patent practice, but it would require the USPTO to do something they are currently not allowed to do, which is limit the filing of continuation applications. Remember, if you will, that the USPTO still remains under an order preventing the Office from limiting the number of claims and continuation applications that can be filed, relating back to the Office’s failed attempt in 2007 to limit both the number of claims and continuations.

Double Standard

And let’s be honest for a moment; there is extraordinary irony in a patent owner being found to have committed unreasonable, unconscionable and sanctionable delay. Well-funded defendants consciously and intentionally engage in a war of attrition when facing alleged patent infringement and subsequent patent litigation. And this is not intended as a criticism of Google because, frankly, if Google and other well-funded defendants are not engaging in a war of attrition they just aren’t doing their jobs.

The problem is the patent system allows defendants to engage in a war of attrition that drags out for a decade or more. And if the defendant loses, they pay in inflated dollars a decade or more later what would have been a reasonable, negotiated, arm’s length price from a decade earlier. Given the time, cost, and the inevitable reality that many defendants will win and have to pay nothing, there is no downside risk to fighting a war of attrition. This efficient infringement is a feature, not a bug. But it is rather twisted for any delay on the part of the patent owner to be sanctionable while the purposeful strategy of delay by defendants goes by without consequence.

Image Source: Deposit Photos
Author: thaneeh.gmail.com
Image ID: 637848838

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18 comments so far.

  • [Avatar for Atraz]
    Atraz
    November 14, 2023 10:20 am

    Anon and Curious,

    You make good points about what promoting innovation really means. However, I also think you are missing out on Max’s point to at least some extent, at least how I understand it (me also being based in an EPO country).

    The point I think he’s making (and if he is not making it then I am) is that the problem is not that an embodiment explicitly disclosed, but not claimed, in an application in which a divisional application can still be filed acts as a blocker, it is that the U.S. system allows too much freedom in how the claims of a divisional application are phrased while still being considered disclosed in the parent application. This creates an uncertainty which is arguably bad for innovation (my point is not to go into a detailed discussion about what drives innovation though, it’s the uncertainty part). In my view, any literally supported terms should be allowed, but anything without literal support should have a very high bar for being allowed, and it should be mandatory for the patentee to argue for why it should be allowed.

    An example for illustrative purposes can be based the article here form yesterday about the Google case where a patent claim was granted to “a web browser process” where the disclosure never mentioned that term, only an “interactive web process”. For me at least, claiming an interactive web process in a divisional application should be allowed, but not “web browser process” in this case. Whether or not a “web browser process” is an “interactive web process” is another matter and not relevant to my point (I think).

  • [Avatar for Anon]
    Anon
    November 6, 2023 02:00 pm

    To add to Curious’s point, Efficient Infringers would L O V E to compete on non-innovation grounds.

    To amplify a prior point: innovation is promoted when an Exclusive right (a negative right) is provided, and it is a Negative right that is transgressed — without requiring ANY actual ‘make’ by the patent holder.

  • [Avatar for Curious]
    Curious
    November 6, 2023 12:51 pm

    If investors are deterred for a full 20 years from investing because of the never-ending threat of late-filed claims, then the progress of the useful arts is hindered rather than helped.

    Here you are conflating the exploitation of past inventions with promoting the progress of the useful arts. The useful arts are not progressing when old technology is being exploited. Rather, it is the invention of new technology that promotes the progress of the useful arts.

    Patents hinder the exploitation of old technology but promote the progress of new technology.

    The flaw in your logic is that it puts exploiters (infringers) at the same level as inventors in terms of importance. You are trying to find a balance between infringers and inventors.

    Almost every restriction on obtaining/enforcing patents will equate to less inventive activity. We live in a society in which information flows so freely and products can be replicated so easily that an inventor cannot rely upon structural impedances to prevent copying. A product shown in a tradeshow one week can be produced in China the following month (or even week). Consequently, any concessions made to exploiters/infringers will ultimately lead to less invention. Without patent protection, only the largest of companies (with built-in competitive advantages) can be reasonably successful in bringing new products to market.

  • [Avatar for Curious]
    Curious
    November 6, 2023 12:39 pm

    IF a live application has claims within its ambit that one need be concerned about, the PROPER thing to do is one of two things, BOTH of which promote innovation:

    1) seek to take a license, thereby supporting the patent owner, or
    2) INVENT around the blocked innovation.

    This. A blocking patent can encourage innovation as it provides the motivation for one to find another path. Just imagine a situation in which patents were good for 60 years and one in which patents were good for just 6 months.

    A patent that was good for 60 years would mandate that competitors find alternatives. On the other hand, with a patent good for just 6 months, it would be cheaper for a competitor to simply wait the 6 months and copy the patented invention than it would be to design around it.

    Obviously, those are two extreme situations but it shows what intelligent actors will do in the face of a very strict or a very loose patent regime.

    The grant of a patent does not merely incentivize the inventor, it also incentivizes competitors to invent new technology that gets around the patent.

    The same logic applies to inventions disclosed in pending applications. Competitors have less incentive to engage in their own inventive activities when it becomes easier for them to copy the work of others.

  • [Avatar for Anon]
    Anon
    November 6, 2023 09:43 am

    Let me call out this fabulous LIE:

    If investors are deterred for a full 20 years from investing because of the never-ending threat of late-filed claims, then the progress of the useful arts is hindered rather than helped.

    It is utter bollocks.

    It is eminently easy to see IF any possibility of late claiming is present – there is NO “gotcha” there.

    IF a live application has claims within its ambit that one need be concerned about, the PROPER thing to do is one of two things, BOTH of which promote innovation:

    1) seek to take a license, thereby supporting the patent owner, or
    2) INVENT around the blocked innovation.

    There is simply FAR too much lack of critical thinking and the supposition that a block — or in your hypothetical, the threat of possible block — is somehow a ‘bad thing.’

    It
    is
    not.

    The notion of exclusivity is the essence of a patent and it IS that ‘blocking’ — for the designated limited time — that is the essence of value and of promoting the progress.

    You suffer a bit (perhaps more than a little) from the propagandist notion of “must make,” and appear to view that any potential ‘blocking’ is bad for promotion when it is that very essence that provides the heart of the patent right.

    As has been noted – the patent right simply is NOT a right to make (product, or money). It is solely a right to exclude others.

    Anything other than that is mere by-product.

  • [Avatar for Anon]
    Anon
    November 6, 2023 08:29 am

    MaxDrie – you suffer from a categorical logical error of attempting a “Motherhood and Apple Pie” solution untethered to the stated problem.

    Hence, moving to ANY part of “what do you disagree with [in my non-sequitor] merely compounds the logical error.

  • [Avatar for Max Drei]
    Max Drei
    November 5, 2023 02:36 pm

    OK, anon, tell me what the issue is, if it is not what I say it is.

    If the patent system is indeed to promote the progress in the useful arts then it must deliver BOTH a scope of protection that is fair for the inventor AND enough legal certainty for investors to facilitate and nurture investment in new technology, investment inspired by the publication of the patent application.

    If investors are deterred for a full 20 years from investing because of the never-ending threat of late-filed claims, then the progress of the useful arts is hindered rather than helped.

    A judicious balance is needed, not only in Europe but also in the USA, between the interests of the inventor and the interests in society of promoting maximum competition and early investment in new technology.

    Which part of all that do you disagree with?

  • [Avatar for Susie Dym]
    Susie Dym
    November 5, 2023 01:59 am

    Hear hear, Gene. The title of this article (and the article generally) is spot-on.

  • [Avatar for David Lewis]
    David Lewis
    November 5, 2023 12:27 am

    Great article.

    Although not nearly as important or straightforward as the points made in the article, I would like to add that it also used to be well-accepted that the Applicant could change their mind at any time as to what the invention really was. This decision puts a wrinkle in that, which is probably not so good for the US patent system.

  • [Avatar for Pro Say]
    Pro Say
    November 4, 2023 12:47 pm

    Should this horrendous, legally-off-the-rails decision stand (it won’t), get ready for 100 – 500+ claims in initial, first-in-family patent apps.

    Meaning many $1,000’s in excess claims fees per app . . . and a whole slew of (justifiably) p.i.s.s.e.d. off patent examiners.

    Fighting back by requiring slews of divisionals.

    Oh what a tangled web we weave.

  • [Avatar for J.]
    J.
    November 3, 2023 08:46 pm

    Judge Alsop wrote this opinion, so claiming he is unfamiliar with patent law is not going to fly. Much more likely that this is the best he could come up with to justify his determination to let Google win.

    This is just embarrassingly bad, and I really hope Sonos appeals.

  • [Avatar for Gary NYC]
    Gary NYC
    November 3, 2023 12:21 pm

    Courts dealing with patent law consistently assume that both parties are flush with cash and free time. Independent inventors and startups, however, need to manage their cash flow. Pursuing a dozen applications simultaneously because continuations somehow issue as a second-class, vulnerable patent, is just not possible if you’re sitting on “only” angel investment or your own savings. This ruling will force small companies and individual human inventors to decide between getting comprehensive patent protection and actually building a product based on the invention. It isn’t like industrial design, manufacturing, and marketing are free.

  • [Avatar for Anon]
    Anon
    November 3, 2023 10:46 am

    MaxDrei plies his EPO Uber Alles yet again with, “That’s the issue, is it not, Gene: balancing the right of the inventor for fair protection with that of the investing public for reasonable legal certainty?

    Simple answer: No, that is most definitely NOT ‘the issue.’

  • [Avatar for Clint Mehall]
    Clint Mehall
    November 3, 2023 08:39 am

    Thanks for writing this article, Gene. I could not agree with you more. Continuations are unbelievably important for threading the needle between patentability/validity and infringeability, especially for smaller entities. Taking them away would further devalue the patent system, and might be the tipping point that renders patents in the US essentially worthless.

  • [Avatar for Lost In Norway]
    Lost In Norway
    November 3, 2023 06:09 am

    Thanks for the excellent analysis, Gene. I just can’t wrap my head around this decision. The judge is so wrong, I don’t know where to even start. Sonos must be gutted.

  • [Avatar for Max Drei]
    Max Drei
    November 3, 2023 05:17 am

    This reminds me of the brief interlude at the EPO when a time limit was written into the Implementing Regulations under the European Patent Convention, imposing a hard cut-off date for the filing of divisional applications. Following the inevitable outcry, that time limit was soon rescinded so that, today, you can keep filing successive divisionals until the end of the 20 year term of the source PCT filing. Nobody complains.

    Mind you, the extreme strictness with which WD and “added matter” is examined under the EPC means that competitors at any time can draw up with confidence an FTO opinion based on nothing more than the foundational WO publication.

    That’s the issue, is it not, Gene: balancing the right of the inventor for fair protection with that of the investing public for reasonable legal certainty?

  • [Avatar for JNG]
    JNG
    November 3, 2023 02:11 am

    Yeah, but what can you expect from Alsup? He’s been the worst patent jurist for 20+ years running and wants to go out with a bang. He’s a consistent and loyal lap dog for big SV infringers, no doubt looking forward to some cushy and better paying Emeritus title at a big Defense firm when he retires from the bench. It can’t happen soon enough.

  • [Avatar for Josh Malone]
    Josh Malone
    November 2, 2023 06:04 pm

    Excellent analysis. Straightforward application of the law. Looks like a Rule 36 affirmance is in the cards.

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