Earlier this month, the Federal Circuit heard oral argument in a patent case we have been following because it attracted multiple amicus briefs. The case, Google LLC v. Sonos, Inc., raises questions concerning prosecution laches, the written description requirement, and the boundaries of judicial discretion at trial. Judges Prost, Reyna, and Hughes heard the oral argument. This is our argument recap.
E. Joshua Rosenkranz argued for Sonos. Rosenkranz suggested “there are three undisputed facts that undermine laches here.” First, he asserted, “the district court found Sonos diligently prosecuted patent applications in this family.” Next, he stated, “more than half of the delay . . . was attributable to the PTO,” so the delay is only six years, instead of thirteen years. Finally, he argued, “Sonos already had broader claims that covered all zone scenes without regard to whether they were overlapping or not well before Google launched its products.”
Judge Prost asked for clarification regarding what she interpreted as a “fundamental tension” between the argument that the district judge “concluded that there was prejudice under prong two, but in fact, based on his conclusion on anticipation, Google was not going to be liable for any money and there was no prejudice.” Rosenkranz responded by arguing, “if there was no written description and these claims were anticipated, there is no patent, and we can’t be held liable for a thirteen year delay in prosecuting claims that were not supported by the written description.” He suggested “the prejudice for Google is totally made up” because “Google had no witness who got on the stand and said that they were caught unaware.” He indicated “Google conceded that . . . its product planning did not begin until 2015.”
Judge Prost questioned whether it is a district court judge’s “unreviewable prerogative to sua sponte reconsider the decision he had made on summary judgment.” Rosenkranz answered by arguing the judge had decided a new matter question on summary judgment that “Google had not even thought of until the middle of the trial.” He added that “this whole written description question is a question that is full of fact issues.” He criticized “the district court’s decision to decide that issue after a trial that was not geared to written description or to new matter without even giving us a chance to put on our witnesses on written description or to develop witnesses on new matter.” Rosenkranz suggested “no judge gets to decide how a . . . patent infringer . . . is going to prosecute its defenses.” Furthermore, he said, since “Google had tried to” bring the issue into the case “without the judge’s intervention in the middle of trial” and wasn’t allowed. He said “the rules are no different just because the judge came up with the theory on his own.”
Rosenkranz argued that, “at a minimum, there should be a new trial.” He requested the court vacate the district court’s judgment, decide the prosecution laches question on legal grounds, and remand the case for further proceedings on the issue of new matter.
Dan L. Bagatell argued for Google. He defended the district court’s ruling on both written description and prosecution laches and urged the Federal Circuit to affirm the judgment. He argued the issue of written description had not been waived, stating it had been raised in opposition to Sonos’s motion for summary judgment. Bagatell highlighted the district court judge excluded the issue from the jury trial for it to be resolved post-trial.
In response to a question, Bagatell argued the district judge did not treat the written description issue as a factual dispute, but instead decided “to deal with [it] after trial and, . . . [since] it was not tried to the jury, it became effectively a summary judgment motion raised by the judge, which he’s entitled to do under [Federal Rule of Civil Procedure] 56(f).”
Bagatell further argued that there was prejudice to Google “because [Sonos] did not claim overlapping zone scenes until 2019, which was five years after [Google] disclosed it.” Moreover, he said, “even if you say that they had a sufficient disclosure, there’s no dispute that they did not specifically call out overlapping zone scenes.” He explained that Sonos “had some earlier patents that addressed zone scenes generally, [but] most of them were continuously rejected over a prior art that disclosed zone scenes as a concept.” Anyway, he said, Sonos “added some limitations . . . but . . . did not have claims that called out overlapping zone scenes until 2019.”
A judge asked Bagatell why he is “so eager for us to make a finding on prosecution laches,” suggesting by doing so the court runs “the risk of opening up the floodgates on this issue.” Bagatell rejected this idea because, he said, of the “rather unusual facts here.”
Finally, a judge stated that it seemed as though the district judge may have been upset by Sonos introducing new matter and used prosecution laches in response to this “misconduct.” This judge asked whether there are any other equitable doctrines that would have addressed that “misconduct.” Bagatell responded by noting there are other equitable doctrines. But, he said, “inequitable conduct . . . is very difficult to prove” and would require a showing of specific intent to mislead the Patent Office.
We will continue monitoring this case and report on developments.