Reversal at the Court of Appeals for the Federal Circuit Avoids Crucial Points in Overturning Lower Court Decision Favoring Google in the Case of Delayed Prosecution

The U.S. Court of Appeals for the Federal Circuit (CAFC) has reversed-in-part and affirmed-in-part a district court decision regarding Sonos' patents in the ongoing legal battle with Google.

In a case that raises questions about the role of continuation applications in patent disputes, the CAFC agreed with the district court that the claims of Sonos' U.S. Patents 10,469,966 and 10,848,885, referred to as the "Zone Scene Patents," were obvious over Google's YouTubeRemote (YTR2) in view of Google's U.S. Patent 9,490,998. However, the CAFC reversed the district court's finding of unenforceability due to prosecution laches.

The CAFC concluded that Google failed to establish prejudice because it presented no evidence to support its assertion that its investment in the accused products actually began in 2015. Conversely, Sonos prevails on prosecution laches, but not for the right reason, according to Quinn.

The CAFC held 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 CAFC also 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.

The disclosure accompanying Figures 3A and 3B of the '885 patent provides adequate written description for overlapping zone scenes, according to the CAFC. In contrast, Google presented no expert testimony of its own, while Sonos' expert testimony was dismissed by Google as "conclusory" and "self-serving."

Founder and CEO Gene Quinn, who has written about Google v. Sonos and the topic of prosecution laches extensively, stated that the CAFC's decision on prosecution laches is unquestionably wrong and does little to solve the broader problems. Quinn explained that the entire industry must continue to live with the fiction that prosecution laches is real, as the Federal Circuit's decision would likely be appealed to the Supreme Court if they ruled otherwise.

The CAFC's opinion in the case was authored by Judge Lourie. The CAFC's decision regarding Sonos' challenge to the summary judgment of invalidity ruling on the '033 patent is still pending. The CAFC is discussing the case in relation to the U.S. Supreme Court decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC.

The Zone Scene Patents were filed in 2019, claiming priority from a 2006 provisional application and a September 2007 nonprovisional application. The case raises 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. Regarding this matter, the CAFC largely dodged the question with this decision, according to Quinn.

Reversal at the Court of Appeals for the Federal Circuit Avoids Crucial Points in Overturning Lower Court Decision Favoring Google in the Case of Delayed Prosecution