Picture this: What began as a promising and collaborative corporate venture between partners has since ground to a halt after being entangled in a years-long legal battle complete with unexpected twists and turns. Amidst the sea of cases, Sonos and Google have repeatedly found themselves in the spotlight, at the center of the unfolding drama. Could the outcome of this case spell the end for patent continuations?
Sonos v Google
In January 2020, Sonos, a company specializing in developing audio systems, filed a lawsuit against tech giant, Google, for allegedly infringing on the company’s smart speaker patents. Over the course of three years, both companies were entrenched in legal disputes, with Google counter-suing Sonos, escalating the tension between the two tech rivals and former partners.
Finally, in 2023, a federal jury reached a verdict favouring Sonos, imposing a $32.5 million penalty on Google as the company was found to have infringed on one of Sonos’ patents covering the management of multi-room audio technology.
However, in a surprising turn of events, a US district judge overturned the ruling, citing that Sonos’ patents were unenforceable due to what is known as 'prosecution laches'. In other words, Sonos was found to have significantly delayed the addition of claims in continuation applications relating to a provisional application filed over a decade ago, thus rendering the act prejudicial against Google.
The case has since sparked discussions, raising questions about the implications of the decision on current patent strategies, especially with regard to continuations.
Understanding the US patent system
Filing continuations in the US has been a long-standing and effective strategy that patent prosecutors have recommended to their clients.
The strategy of filing continuations allows patent owners to adapt to evolving market trends by strengthening or refining their claims in subsequent continuation applications, expanding their protection while maintaining the priority date of the earlier original filing. The prevalence of the practice has led to many patent owners having an array of continuation applications within their intellectual property (IP) portfolios as well.
Although it may seem that continuations can go on forever, they are limited to the 20-year patent term of the original patent. It is currently legal and within the rights of the patent holder to decide when claims are incorporated in their continuation applications, even if it means that claims are added to target a competitor.
In the case between Sonos and Google, it appears that the US district court sees a major problem wherein Sonos filed the asserted claims in question 13 years after filing its parent (original) application even if the company diligently prosecuted all patents as part of the family.
What is going on here?
Now, the question stands - is there really a threat to keeping patent families alive? The answer to that question may not be so simple. In view of the current framework of the patent system, there are a few more details that need to be considered.
Firstly, Sonos may have appeared to voluntarily delay prosecution knowing that Google had already invested in developing and marketing a similar product for years prior to making the claim, putting Google in “a cloud of infringement.” What is important to note here is that this is commonly viewed as a tactical and strategic decision, instead of an act of prejudice. It seems there was nothing inherently wrong with Sonos’ actions on this front.
Secondly, the real downfall of Sonos may not exactly be the delay, but instead, the issue may be regarding the addition of new matter. The way continuations can benefit from the protection of an earlier filing is if the claims added are supported by the specification outlined in the parent application. The problem with Sonos is that the parent application never actually disclosed the invention. Rather, it was added to the specification years later by way of amendment. Thus, the patents in question were found to be invalid.
This situation stresses the importance of having a well-drafted, complete application at initial filing to preserve the priority date of future continuation claims. This includes having broad claims, clear drawings, as well as a thorough and detailed description of the invention, encompassing all its aspects, variations and various potential applications.
Establishing a strong parent application lays the groundwork for subsequent continuations since if certain features are not disclosed in the original application, its earlier priority date will not be recognized in the latter.
Final Thoughts
Don’t worry, we believe patent continuations are here to stay. As Sonos will likely appeal the decision, we will keep monitoring what else unfolds and provide updates if needed. In the meantime, we should not dismiss the possibility of a shift in the patent strategy landscape in light of the latest verdict in the Sonos v Google case. Whatever the case may be, we will be prepared to adjust to any changes in patent law.
If you are concerned about what this case means for your patent strategies, reach out to us. We are more than happy to help.
Stratford Intellectual Property comprises a team of IP experts, featuring certified patent agents and seasoned professionals experienced in all facets of the IP lifecycle, consistently providing strategic advice and solutions. Whether you have questions regarding IP education, awareness, management or strategy, rest assured that we have you covered.