As we noted earlier this week, two cases being argued in July at the Federal Circuit attracted amicus briefs. The second of those cases is Google LLC v. Sonos, Inc., a patent case. In this case, Sonos appeals a judgment of a district court, raising questions concerning prosecution laches, written description and priority dates, and summary judgment of invalidity. This is our argument preview.
In its opening brief, Sonos argued “[p]rosecution laches does not apply to Sonos’s zone-scene patents because the animating feature for that defense—an unfair timewise extension beyond the period Congress prescribed—is absent here.” Furthermore, Sonus argued, even if “prosecution laches could apply here, the district court abused its discretion.” Sonos emphasized that the district court said “Sonos ‘diligently’ prosecuted the family of zone-scene patents for 13 years.” Additionally, Sonos argued, Google “could not have been prejudiced by any prosecution delays because Sonos had patent claims covering all zone scenes (overlapping or not) long before Google’s infringing products.” According to Sonos, moreover, the “district court improperly decided as a matter of law that the zone-scene patents were entitled to only a 2019 priority date because of new matter, and lacked written description in any event.” Sonos argued “the court stepped into the role of factfinder and impermissibly weighed the evidence in the light least favorable to Sonos.” According to Sonos, “[h]ad it applied the proper standards, the court would have found that Sonos disclosed overlapping zone scenes long before 2019—no later than its 2007 non-provisional—and that Sonos did not add new matter to the zone-scene specification in 2019.” Finally, it argued summary judgment was inappropriate because “the district court usurped the jury’s role by resolving material factual disputes over the validity of the direct-control patents.”
In its response brief, Google argued that, even though “Sonos contemplated overlapping zone scenes in 2005 and described them in internal documents discussing proposed improvements to its UI, Sonos did
not disclose or claim them in a patent application until 2019.” According to Google, “[b]ecause Sonos added new matter in 2019, the asserted claims’ effective filing date was 2019” and, as a result, “because accused Google products were on sale in 2015, those products anticipated the asserted claims if they infringed as Sonos contends.” According to Google, moreover, “Sonos’s procedural objections are meritless.” Google said the district court “properly made factual findings after trial in connection with Google’s equitable defenses, and it properly found anticipation because there was no genuine dispute of material fact.” With regard to prosecution laches, Google argued the district “court did not clearly err in finding that Google proved both elements by clear and convincing evidence.” Next, Google contended that the Federal Circuit “need not reach Sonos’s argument that Google’s prior-art” patent did not disclose “device-picker limitations” because one of the relevant claims “is or soon will be moot” and “Sonos did not preserve this argument as to” another patent. Lastly, Google asserted “[t]he district court . . . correctly held that the party mode of Google’s prior-art” product “included a remote playback queue as claimed” in one of the patents.
In its reply brief, Sonos argued “the opinion below throwing out the jury’s verdict was unprecedented, legally wrong, and unmoored from any semblance of proper procedure.” First, Sonos argued, prosecution latches do not apply, given that Google “does not dispute that no case has ever applied prosecution laches where a patentee did not improperly extend their patent term.” Next, Sonos pointed out that “the doctrine is limited to abuses of the patent system,” but, it said, “Google fails to explain how the routine continuation practice here was either egregious or prejudicial.” With regard to “new matter, written description, and the connected issues of priority date and anticipation,” Sonos said, “everyone agrees that Sonos described zone scenes . . . in 2005.” Furthermore, Sonos argued, “[n]o rule allows a court to identify fact-intensive, non-equitable defenses in the middle of trial and then resolve them itself after a trial where no one litigated those issues.” As a result of Google forfeiting these issues, Sonos said, the Federal Circuit “should reverse, . . . but at a minimum order a new trial following proper procedures.” Finally, Sonos urged the Federal Circuit to “vacate the judgment for the direct-control patents and order a trial.”
Five amicus briefs were filed in this case. Three support reversal, while two support affirmance.
- An amicus brief was filed by the American Intellectual Property Law Association in support of neither party and in favor of reversal of the prosecution laches holding.
- An amicus brief was filed by the Alliance of U.S. Startups & Inventors for Jobs (“USIJ”) in support of the appellant and reversal.
- An amicus brief was filed by the George Washington University Law School Intellectual Property and Technology Law Clinic in support of Sonos, Inc. and in favor of reversal.
- The National Retail Federation filed an amicus brief in support of Google and affirmance.
- The Public Interest Patent Law Institute also filed an amicus brief in support of Google and affirmance.
Oral argument is scheduled to be heard on Thursday, July 10 at 10:00 am in Courtroom 203.