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.