CAFC Dodges Key Issues in Reversing District Court Finding for Google on Prosecution Laches

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday reversed-in-part and affirmed-in-part a district court decision that held various claims of Sonos’ patents directed to controlling media playback systems invalid and unenforceable. Notably, the CAFC reversed the district court’s finding with respect to unenforceability due to prosecution laches, holding that the district court abused its discretion in finding that Google was prejudiced by Sonos’ alleged delay in claiming the subject matter at issue via continuation practice. The opinion was authored by Judge Lourie.

The case has raised questions about whether continuation applications can support a finding of laches where the defendant argues that the patent owner could have filed the claims earlier. The 2017 U.S. Supreme Court decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC held that there could be no laches if a patent infringement litigation were commenced during the statute of limitations set forth in 35 U.S.C. §286. Similarly, there is a congressionally authorized timeframe within which an applicant must act in order to prosecute a patent application and avoid abandonment, set forth in 35 U.S.C. 133.

However, the district court found here that “Google had shown that Sonos ‘was guilty of unreasonable and inexcusable delay in its prosecution of’ the Zone Scene patents because Sonos filed the provisional application from which those patents claim priority in September 2006, but did not seek to claim overlapping zone scenes until thirteen years later, in April 2019.”

Sonos’ U.S. Patents 10,469,966 and 10,848,885 are dubbed the “Zone Scene Patents” by the CAFC and were filed in 2019, claiming priority from a 2006 provisional application and a September 2007 nonprovisional application. The district court found that Google had also “shown that it suffered prejudice as a result of Sonos’s delay, explaining that ‘Google began investing in the accused products by at least 2015, when it released its first products that practiced the invention’” and ultimately held the patents unenforceable.

In its discussion of prosecution laches, the CAFC explained that Google needed to show “that Sonos’s delay in prosecution was unreasonable and inexcusable under the totality of circumstances, and that Google suffered prejudice attributable to that delay.” The CAFC limited its analysis to the issue of prejudice, which it concluded Google failed to establish because it “presented no evidence—testimony or otherwise—to support its assertion that its investment in those products actually began in 2015, or that it was caught unawares that Sonos may have already invented the adjudicated-infringing functionality when making those investments.

Furthermore, even if the court did accept that Google began investing in the products in 2014 or 2015, as it asserted, the evidence in the record did not support a finding of prejudice, said the opinion. The district court’s finding to the contrary was error and its holding of unenforceability an abuse of discretion, it added.

Sonos also argued on appeal that the district court erred in granting judgment of invalidity of the Zone Scene patents and in granting summary judgment of invalidity of U.S. Patent 10,779,033 (the “Direct Control patent”). The CAFC agreed with Sonos that the district court erred in finding the claims of the Zone Scene patents invalid due to lack of written description of the overlapping zone scenes, noting that the disclosure accompanying Figures 3A and 3B of the ‘885 patent “plainly provides adequate written description for overlapping zone scenes.” The opinion also disagreed with Google’s argument that the disclosure depicts alternative, rather than complimentary, embodiments, and dismissed Google’s argument that Sonos’ expert testimony was “conclusory” and “self-serving” since Google presented no expert testimony of its own.

Regarding Sonos’ challenge to the summary judgment of invalidity ruling on the ‘033 patent, however, the CAFC agreed with the district court that the claims were obvious over Google’s YouTubeRemote (YTR2) in view of Google’s U.S. Patent 9,490,998.

IPWatchdog Founder and CEO Gene Quinn, who has written about Google v. Sonos and the topic of prosecution laches extensively, said the CAFC largely dodged the question with this decision and it does little to solve the borader problems. Quinn explained:

“The Federal Circuit decision on prosecution laches is a mixed bag, to say the least. As I have written repeatedly, the Federal Circuit approach to prosecution laches is unquestionably wrong, and that remains unchanged after this decision. The Supreme Court has specifically said there can be no laches when action is taken within a statutorily defined timeframe, and they have said that specifically in the patent context. As I’ve explained ad nauseum, applicants are required to act within statutorily defined time frames or applications go abandoned. Using all the time the Patent statutes give an applicant cannot under any fair or reasonable reading of Supreme Court precedent result in prosecution laches, period. And everyone except for the Federal Circuit knows that to be true. So, it is really unsurprising that this panel would overrule the district court on prosecution laches saying Google did not prove laches occurred because if they ruled otherwise it would be appealed to the Supreme Court who would say what they’ve said twice in recent year in other IP cases—there is no such thing as laches when action is taken within a statutory timeline. So, Sonos prevails on prosecution laches, but not for the right reason. And the entire industry must continue to live with the fiction that prosecution laches is real.”