by Dennis Crouch
Sonos has filed its notice appealing Judge Alsup’s recent decision in Sonos v. Google that rendered two Sonos patents unenforceable due to prosecution laches. After being awarded $32 million by a jury, Sonos saw its verdict flipped by Judge Alsup in a harsh ruling accusing the company of “wringing fresh claims to read on a competitor’s products from an ancient application.” To mount its appeal, Sonos has enlisted Supreme Court heavyweight Josh Rosenkranz, head of Orrick’s Supreme Court and Appellate practice alongside the trial team led by George Lee. Dan Bagatell, Perkins Coie’s head of Federal Circuit Patent Appeals Practice has filed an appearance in the case for Google.
The appeal will likely focus on several key issues from Judge Alsup’s ruling:
Priority Date: A core finding by Judge Alsup was that new claim language added by Sonos in 2019 constituted improper “new matter” that undermined the priority date for the asserted claims. However, the addition of new language does not necessarily destroy an earlier priority date. Sonos will argue on appeal that the claims were still adequately supported under enablement and written description standards.
Prosecution Laches: While agreeing Sonos diligently prosecuted its patents over 13 years, Judge Alsup still found unreasonable delay and prejudice to Google. Sonos will contend that prosecution laches should not apply given its diligence and the lack of improper motive or negligence. Sonos will also argue that changes to patent term limits have effectively codified a statute of limitations, preempting the common law doctrine of prosecution laches.
Prejudice: Judge Alsup concluded Google was prejudiced because Sonos crafted new claims covering Google’s wireless speaker innovations. But Sonos will counter that there was no evidence showing Google actually relied on Sonos’ inaction or that claims covering Google’s products were foreseeable at the time. Any benefit to Sonos was merely incidental and not the kind of economic prejudice required for prosecution laches.
Sonos clearly faces an uphill battle given the Federal Circuit’s precedent allowing prosecution laches and Judge Alsup’s adamant tone. However, several aspects of the decision appear vulnerable in my view.
Judge Alsup expressed palpable frustration at feeling he was not given the full story about the claims and priority date earlier in the case. This likely colored his view of Sonos’s conduct. The Federal Circuit will review his legal conclusions without any similar sense of personal betrayal. And, the Federal Circuit has historically been much less likely to speak in terms of moral judgment. Instead, the court tends to follow a technocratic approach that centers on following the statute and advancing patent law objectives.
Note here that I have not reviewed the entire docket or trial transcript, and so I am confident that there are also many other issues that Sonos could could potentially appeal. The appellate team will need to pick the top 3-4 that share the Venn sweet-spot of having a good chance of both (1) winning on appeal; and (2) dramatically changing the outcome.
With briefing not due until February 2024, the Federal Circuit likely will not hear oral arguments until early summer. This means Judge Alsup’s aggressive application of prosecution laches and continuation practice will hang over patent prosecutors for months to come, perhaps chilling use of continuation applications.
Re: “..the Federal Circuit likely will not hear oral arguments until early summer. This means Judge Alsup’s aggressive application of prosecution laches and continuation practice will hang over patent prosecutors for months to come, perhaps chilling use of continuation applications.” Very unlikely. Not many P&P patent attorneys are paying attention to mere District court decisions on appeal. Litigators faced with one of these submarine patents will become familiar with the U.S. case law allowing “writing claims from the catbird seat” [as one case put it] to cover much later products of others, long after an original filing date, with serial continuations, long delayed divisionals, or otherwise, plus the overruling of prior “late claiming” cases. [Assuming adequate specification claim support.]
I agree Paul – especially given that Continuation practice is quite pervasive (and established).
OT, but interesting (from the standpoint of comments made by the common group of commentators here):
link to ipwatchdog.com
The upcoming envisioned Funds shortage notably does NOT include any type of cliff effect of filings (say, for example, from foreign entities such as those of the Chinese state and its subsidized innovators).
I will not put words into Night Writer’s mouth, but do wonder if this type of “canary in the coal mine” is to be taken as merely a leading indicator, and is meant to be ‘updated’ with more severe prognostications if the lead is taken by Congress.
Second, I wonder if there is any “D” candidate to take the Jimmy Carter position?
It is not really clear to me how Sonos can diligently prosecute its patents and still be held responsible for “unreasonable delay.” It has to be one or the other, doesn’t it?
Absolutely.
Quick question (on a factual basis):
Is the chain of Continuations proper under controlling law?
If I were to steel-man it, I’d cite to the Lemelson case. IIRC, he was also “diligent” in the sense that he always responded w/i the relevant time periods. Much of the delay wasn’t even his of his volition…the USPTO sat on an appeal for something like 10 years.
But, he also first presented his bar-code claims something like 40 years after his original filing date.
“But, he also first presented his bar-code claims something like 40 years after his original filing date.”
Not seeing your point with this, OC.
Plain simple application of New Matter Doctrine easily controls any mal-behavior that you allude to.
SYMBOL TECH V LEMELSON… The Fed Cir found the Lemelson’s claims unenforceable for prosecution laches **even though** those claims were entitled to the 1954 priority date (i.e., there was no “new matter” problem)
So, I read that case to mean you can be “diligent” (i.e., maintain a proper priority chain and timely respond to every office action) and still have unenforceable claims b/c of “unreasonable delay”
I don’t think that that case is viable given the change in Continuation practice (Comtinuations tied to earliest priority date).
I “get” that you want to draw a parallel, but that different era doesn’t reach, even if but for other reasons.
Do you have an “in era” case?
Lemelson’s extensive really late claiming and issuances were a major inspiration for the statutory change limiting patent terms to 20 years from earliest claimed filing dates [plus extensions for PTO delays] rather than 17 years from issuance.
Wasn’t that TRIPS and international alignment?
May have been both — regardless, would like to see a modern era case for the supposition by OC supported.
Slightly OT, but any woman who travels or chooses to reside in Missouri, in Texas, or any number of other red states for any length of time must be something of an idiot.
“Deplorables,” eh?
So why so quiet on the Israel/Hamas situation?
Haven’t received your script on that one yet?
Thank you for man-splaining. The most important thing to us women when deciding where to live is not the safety of our family, freedom of speech and religion, taxes, housing prices, good schools, etc. It is whether or not we can abort a baby full term.
Please tell us one state where a woman “can abort a baby full term.”
Go ahead, I’ll wait.
Just one?
Seven are mentioned and six are directly listed:
My emphasis added:
States that allow for late-term abortions with no state-imposed thresholds are Alaska, Colorado, District of Columbia, New Hampshire, New Jersey, New Mexico, Oregon, and Vermont.
from: Late Term Abortion Laws by State 2023 (worldpopulationreview.com)
And the number of “full term” abortions that have been performed in those states is…?
hitting a filter….
hyperlink: link to worldpopulationreview.com
As to ‘have been performed,’ isn’t one more then enough?
Isn’t the ability (which your first post sought to denigrate) more than enough?
+1
It is sad, but not surprising, how many pro-choice people do not know (pretend not to know?) about these laws.
Pro-choice people aren’t trying to impose a theocracy on the country, so they don’t concern themselves with knowing “about these laws.”
It’s the b#tt hurt people like you who thought “returning abortion to the states” would lead to your version of Gilead that are so concerned “about these laws” especially after losing in every state where the issue was on the ballot.
You’re going to keep losing.
How many fallacies do you want to pack into, “Pro-choice people aren’t trying to impose a theocracy on the country, so they don’t concern themselves with knowing “about these laws.” / It’s the b#tt hurt people like…“…?
First – YOU brought up a rebuttal to ‘laws.’ YOU lack the humility to simply admit that you were wrong when shown to be so (and attempted to be snide from your place of error).
Second – The FAR CRY of ‘b u tt hurt’ has been most definitely from the SPRINT LEFT.
Third – The Spring Left (aka neo-marxist, aka Woke, and the like) ARE a theocracy, FULLY intent on ramming down their ‘religion.’
How in the world have you missed all the “Equity” and virtue-signaling.
That same signaling that OH SO CONVENIENTLY disappears when the Left eat Left situation arises in the Israel/Hamas issue – one you run away from sharing your view on.
Grow a pair, Smelly.
Your turn: what is your position on the Israeli/Hamas situation?
Still waiting, Breeze.
Keep waiting, Billy.
Smelly – you do realize that adopting the moniker that only one other single person has ever used – that being Malcolm “P00py Diaper” Mooney – that you do yourself no favors, eh?
The self-immolation is delightful though. Be sure to join in with some (any) cogent view at any time.
Lol. You asked to name a state where they can occur. Now you shifted the goal post, without even acknowledging that you were ignorant of the fact that it is allowed. Show some humility.
Note that he has fled the scene without answering any of the rebuttal questions to him.
Oh so typical of the Sprint Left.
It appears you are not aware of this.
link to cbsnews.com
The person who proposed the bill said it would allow post-birth abortions, and Governor Northam discussed how that would occur.
The good Governor is clearly wrong, as once born, the fetus obtains ALL the rights of a living (legal) human.
Not only would this be an ethical violation of the doctor’s Hippocratic Oath, it would be murder.
A four year old story on a bill that was never passed and commented on by a governor who’s been out of office for almost 3 years?
Show some humility.
You first.
Perhaps after you answer the questions put to you.
It is still relevant. He said what he said.
And what theocracy? lol. You have no idea why I feel as I do. Why does the left assume everyone who does not agree with their views on abortion does not agree because of religion? Having had children born at 25-26 weeks who are now in their 30s, I consider the viability of the baby to be paramount to the decision.
The decision lies with the states. I am against Congress trying to change that. That does not mean we have to shut up when the states pass laws that allow abortion of a full-term baby.
“Why does the left assume everyone who does not agree with their views on abortion does not agree because of religion?”
It’s a ‘feature’ (bug!) of the Malcolm-like One-Bucket, oh so very typical of the Sprint Left.
“The decision lies with the states.”
So your problem with states that have made decisions that there will be no time limit is…what?
Show some humility and move the goalposts back Smelly.
Most ALL Americans would find late third trimester ab0rtions abhorrent.
You’ve been a d0uche since 5.2.1.
My problem is with allowing/sanctioning murder of an innocent. You clearly do not have a problem with that. Or you are so intent on winning the argument that you take an absurd position.
PM,
it is quite evidently the opposite: his intent on taking absurd positions (and moving the goalposts when c0nfr0nted with his absurdity) that makes it so that he will not win any arguments.
See also:
“Legal at any stage” at Abortion law in the United States by state – Wikipedia
hyperlink: link to en.wikipedia.org
A politician on a talk show said if I don’t have to get a Covid shot because it’s my choice, it us my choice. Is the SCOTUS with less and less respect going to arrest him? I think it is no one else’s business than the people involved. And I think Breeze is correct. Why has this blog gone so far afield of IP Law. Why don’t you discuss the SCOTUS. Maybe even take bets on how little they will matter to the citizens of the USA as they try to box everyone’s idea about their personal freedoms being taken. The special interests and Lobbyists ought to take over for real, because we know they are running the SCOTUS AND congress already.
Imagine Netanyahu telling the world GFY. And those that put him back in power are now so so sorry. He knows as long as Trump gas a chance, the guillotine will stay in storage.
I wonder about MBS. Anybody else?
“ Supreme Court heavyweight ”
LOL
Bozo was one of the biggest stars of his day.
“ chilling use of continuation applications.”
Oh, please, give us a break with the hysterics.
“ The Federal Circuit will review his legal conclusions without any similar sense of personal betrayal.”
While it won’t be “personal”, the facts of the matter will be appreciated by any judge who has seen a party withhold or obscure important information.
“the Federal Circuit has historically been much less likely to speak in terms of moral judgment.”
Do you have data on how often Alsup and the Federal Circuit use “terms of moral judgment” in their opinions? I doubt it. So what are you talking about (or out of)? Maybe start by considering how often the CAFC has said that a certain type of finding “should be rare”.
Alsup got upset at the wrong party, as Sonos followed existing laws in its Continuation prosecution, and it was up to Google to make its case better.
Get your undies out of that bunch.
I remember years ago saying something about identifying and altering the Gene. MM said I was an I’d I ot. Sickle Cell and altering the Gene.
I suppose you are lucky the kidnap victim is only as described as a 1/2 wit made that statement. Dennis pull that post up please.
Also someone recently asked me if I changed my name…? So on 02/ 02/2004 could that have been why I found this on my phone at approx 2021?
Or maybe another on that long list that was used by another.
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