In Sonos v. Google, the Federal Circuit Has a Chance to Fix Its Prosecution Laches Doctrine

On Thursday, July 10, the United States Court of Appeals for the Federal Circuit will hear oral arguments in Google v. Sonos (No. 24-1097). Front and center in this appeal is the issue of prosecution laches. Sonos’ brief frames the question in this way: “Whether the district court erred in applying prosecution laches to declare the ‘885 and ‘966 patents unenforceable, based on nothing but standard continuation practice that did not extend the patents’ terms.”

What Sonos is Missing

Interestingly, Sonos’ opening brief, filed February 12, 2024, does not question the propriety of prosecution laches and does not cite to the seminal case on laches as it pertains to patents. The 2017 decision of the U.S. Supreme Court in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, specifically dealt with the question of laches in the patent context. The case dealt with whether laches could ever be appropriate if a patent litigation were commenced during the statute of limitations. Not surprisingly, the Supreme Court held that there could be no laches if a patent infringement litigation were commenced during the statute of limitations, which was entirely congruent with a similar holding by the Supreme Court several years earlier in the context of copyright infringement claims brought during the authorized statute of limitation.

The Supreme Court has already ruled there can be no laches if patent or copyright infringement claims are brought within the limitations period because of the existence of a statute that specifically authorizes the behavior. In both patent and copyright scenarios, Congress has specifically and unambiguously authorized patent and copyright owners to bring infringement claims within a certain window. It is entirely disingenuous for any court to hold that an action taken within a Congressionally authorized timeframe is inequitable, unfair, or otherwise repugnant. To the contrary, an action taken within the Congressionally defined statute of limitations is categorically allowed.

There is unquestionably a Congressionally authorized timeframe within which an applicant must act in order to prosecute a patent application and avoid abandonment. This time limitation is specifically set forth in 35 U.S.C. 133. So, just like there is a statute of limitation within which to bring an infringement action, there is also a statute of limitation within which a patent applicant is authorized to act to prosecute a patent application. Acting within a Congressionally allowed time during patent prosecution cannot possibly be inequitable, unfair, or otherwise repugnant. Acting within the timeframe set forth in §133 is specifically and unambiguously allowed.

The entire rationale for the Supreme Court overruling the Federal Circuit in SCA Hygiene was this: Laches can only exist to fill statutory gaps. So, if there is no statutory gap, laches is inappropriate. And like there is no statutory gap relating to commencing an infringement action, there is no statutory gap relating to prosecuting a patent application. The timeframe for both is hard and fast, and cast in statute.

So, it is curious why Sonos chose not to even raise this argument and instead seems to have confined its case within the framework of prosecution laches being appropriate. Sure, I understand that the district court got it wrong even applying the Federal Circuit created doctrine of prosecution laches, but reasonable minds really can’t differ—according to the Supreme Court rationale, prosecution laches is not appropriate.

Bait and Switch

Even if the Federal Circuit is willing to ignore the Supreme Court’s decision in SCA Hygiene, which is entirely possible, if not likely, there is still an enormous problem that cannot be reconciled. Prosecution laches has evolved into a non-equitable doctrine that allows the U.S. Patent and Trademark Office (USPTO) and the courts to wait a decade or two before questioning an alleged delay that would render an already issued patent unenforceable. Prosecution laches retroactively and without a contemporaneous warning or an opportunity to fix the alleged delay, results in the patent being held unenforceable due to prosecution laches. Such a retroactive bait and switch would embarrass even the most brazen charlatans and con artists.

How can it be possible that the Federal Circuit unilaterally determines years later that although the applicant acted within the time frame authorized by Congress it nevertheless results in the patent being a nullity—simply found unenforceable? If this were to happen in a third-world country, the headlines would write themselves, and no doubt justifiably call into question the unjust retroactive canceling of property rights in true Banana Republic fashion. Talk about emperors not wearing any clothes, it stretches the imagination to understand how the Federal Circuit can possibly believe their doctrine of prosecution laches jives with American jurisprudence.

Retroactive application of the law is particularly repulsive, as has been explained by the Supreme Court numerous times. For example, in Landgraf v. Usi Film Prods. Justice Stevens, writing for the majority, explained (with citations omitted):

“[T]he presumption against retroactive legislation is deeply rooted in our jurisprudence, and embodies a legal doctrine centuries older than our Republic.  Elementary considerations of fairness dictate that individuals should have an opportunity to know what the law is and to conform their conduct accordingly; settled expectations should not be lightly disrupted. For that reason, the principle that the legal effect of conduct should ordinarily be assessed under the law that existed when the conduct took place has timeless and universal appeal.”

If retroactive legislation is wholly inappropriate, how could the Federal Circuit think it is appropriate to ignore a clearly defined Congressional timeframe to act and retroactively proclaim that, despite timely action by a patent applicant, the patent is still unenforceable? If it is repugnant for legislation to apply retroactively to destroy settled expectations, it must similarly be repugnant for a concocted common law doctrine to be applied retroactively to destroy settled expectations. Talk about pulling the rug from under your feet; only many years after it is too late for the patent owner to have done anything differently, the Federal Circuit swoops in to snatch a patent regardless of the fact that the applicant followed the law.

There’s Only One Right Answer – But Let’s Not Hold Our Breath

Why it is offensive in the view of the Federal Circuit for a patent owner to use all the time allocated by Congress to act is unclear. What is clear, however, is the Federal Circuit’s jurisprudence on prosecution laches is in direct conflict with what the Supreme Court has held relative to the doctrine of laches. And it violates all sense of equity and fair play to retroactively punish patent owners for doing what they then (and still do) have a right to do, which is respond within the timeframe authorized by Congress.

While the Sonos case requires the Federal Circuit to consider its own ill-conceived prosecution laches caselaw, there can be little question that there is a right answer. Even the Federal Circuit has to recognize that there is no such thing as prosecution laches if the patent applicant acted within the Congressionally authorized timeframe to act. Whether they do the right thing, however, is an entirely different question. And I for one won’t be holding my breath.