Patent Continuation Methods Face Main Menace

by Dennis Crouch

Affect of Sonos on Patent Prosecution: The latest Sonos v. Google resolution threatens to grind to a halt, or not less than considerably limit, a once-common patent prosecution technique – preserving continuation functions pending for years to acquire new claims that cowl market developments. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  In Sonos, Choose Alsup discovered Sonos’s patents unenforceable on account of prosecution laches, regardless of Sonos diligently prosecuting associated functions for 13 years; serially submitting a continuation with every allowance. The choice casts doubt on the viability of pending continuation functions over an extended interval, even absent any evident applicant delay — particularly in conditions the place new claims are drafted in response to rising applied sciences or market calls for. Though declare fluidity stays an integral precept in patent legislation, Sonos provides appreciable viscosity to the apply. The viability of continuation methods, particularly in quickly evolving applied sciences, might face a reckoning within the wake of Sonos.  The patentee will definitely attraction, however it isn’t clear that the Federal Circuit will change the trail in any means.

Understanding Declare Fluidity: One characteristic of the US patent system is declare fluidity.  Most claims are amended throughout prosecution. Most patents declare precedence again to an earlier submitting with completely different claims.  Claims can later be amended throughout a post-grant continuing. And, to make issues clear the reissue state permits a patentee to change the claims to cowl in conditions the place the unique patent claims “roughly than he had a proper to say within the patent.” 35 U.S.C. 251.

Though reissue functions are all the time accessible in the course of the lifetime of a patent, they’ve main downsides, together with the 2 yr post-grant timeline for enlarging patent scope. Id. The choice method adopted by most is to “maintain a member of the family alive” in areas involving expertise vital to the patentee.  As one family-member patent is about to situation (or be deserted), the patentee makes certain to file a continuation utility with a brand new set of patent claims and claiming precedence again to the unique submitting paperwork.

In creating that new set of claims, the patentee will sometimes take into account {the marketplace}. What market developments have occurred because the authentic submitting date? A few of these developments could also be inside — their very own present and future product line.  Among the developments may even be exterior — trying to see how others have begun utilizing features of the disclosed invention.  We then craft claims that cowl these new developments; being cautious to make sure that the patentee has “a proper to say” this new protection.  This proper to say is ordinarily measured by the doctrines of enablement and written description and through prosecution we additionally look to the prohibition on new-matter below 35 U.S.C. § 132.

Sonos v. Google: Choose Alsup’s new resolution in Sonos v. Google means that this widespread method ought to come to an finish. Specifically, the court docket concluded that Sonos’ asserted claims have been unenforceable as a result of they’d been added to a continuation utility filed 13-years after the unique precedence doc in a means 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 13 years by the patent holder, Sonos. Sonos filed the provisional utility from which the patents in swimsuit declare precedence in 2006.

Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  Choose Alsup goes on:

Trial delivered to mild what occurred right here. This was not a case of an inventor main the business to one thing new. This was a case of the business main with one thing new and, solely then, an inventor popping out of the woodwork to say that he had give you the thought first — wringing recent claims to learn on a competitor’s merchandise from an historic utility. . . . It’s fallacious that our patent system was used on this means. With its constitutional underpinnings, this method is meant to advertise and defend innovation. Right here, against this, it was used to punish an innovator and to counterpoint a pretender by delay and sleight of hand. It has taken a full trial to study this unhappy reality, however, in the end, a measure of justice is completed.


The fundamental setup right here will not be merely a delay.  Choose Alsup concluded that Sonos realized of a specific characteristic from Google (permitting a speaker to be in two completely different zones). And, that Sonos later filed a continuation utility that included claims to the brand new characteristic. In the meantime Google invested within the expertise and launched its personal merchandise.

New Matter and Precedence Claims: An odd facet of the choice is that Choose Alsup concluded that the brand new characteristic constituted “new matter” that “[u]nder black letter patent legislation … essentially sunk any declare of precedence.”   In fact, “new matter” doesn’t truly tank precedence claims.  Reasonably, the precedence query relies upon upon a correct declare and adequate assist as guided by the doctrines of enablement and written description. However Choose Alsup seems to have felt misled relating to the precedence situation earlier within the case. At that prior stage, Google had didn’t current sure proof exhibiting lack of precedence. Choose Alsup appears to really feel he was duped into accepting Sonos’ precedence declare. As he put it:

Put one other means, ‘I acquired a half a deck of playing cards’ and ‘I used to be not instructed the whole fact.’ . . . To repeat, the decide was not made conscious within the briefing (or on the listening to, or in any other case till trial,) that this sentence had been inserted by modification in August 2019. That, alone, would have been a crimson flag.

Id.  The opinion reveals Choose Alsup’s displeasure at feeling he was not given the total story by Sonos earlier within the case. He appears to take specific situation with Sonos counting on specification language that was added years later by modification.  He equally didn’t fault Google for failing to find the problem because the prosecution historical past is kind of complicated.

Potential Repercussions for Patent Prosecutors and Portfolio Managers: The case is clearly a significant one which patent prosecutors and portfolio managers ought to take into account.  The choice suggests strongly that the widespread patent prosecution technique of preserving continuation functions pending to acquire new claims could also be disfavored – not less than when performed over a decade or extra as nicely its use to acquire new claims masking market developments.

Diligence in Prosecution Not a Justification for Delay: Not like prior circumstances comparable to Hyatt, the patentee was diligently prosecuting the patents throughout the complete interval. Nevertheless, the court docket discovered that diligence “doesn’t render the delay any much less unreasonable and inexcusable. Certainly, it renders the delay all of the extra unreasonable and inexcusable.” The court docket defined that Sonos “might have filed parallel functions with new claims masking the invention” and didn’t need to “run out its string of inert functions earlier than turning to say the invention that mattered.”

Patent Time period and Prosecution Laches: The Hyatt and Lemelson circumstances adopted by the Federal Circuit centered on pre-1995 patent functions. The outdated system supplied an incentive for delay throughout prosecution as a result of the patent time period of 17 years started working as of the patent issuance date.  The consequence was the potential of enormously growing the efficient patent time period.  That incentive for delay not exists as a result of post-1995 patents (like these of Sonos) have a patent time period that runs from the non-provisional submitting date.  Thus, every  day of delay ate into the Sonos patent time period.  There’s some assist for the concept prosecution laches not applies on this new system due to the congressionally created restricted time period of 20 years that begins with the beginning of prosecution in a way that’s intently parallel to a statute of limitations.  In latest circumstances, the Supreme Court docket has held that laches will not be a correct protection to damages claims when a statute of limitations is in place.  Nonetheless, Choose Alsup concluded that the change in patent time period has no affect on the doctrine of prosecution laches.

The Way forward for Declare Fluidity and Patent Technique: Within the case, a jury had sided with the patent holder Sonos and awarded $32 million in again damages.  Choose Alsup’s resolution flips that verdict and likewise kills any plans Sonos needed to exert its unique rights over {the marketplace}. Whereas declare fluidity stays an integral characteristic of patent legislation, Sonos has added appreciable viscosity to the system.