The Federal Circuit reversed-in-part and affirmed-in-part a district court decision concerning Sonos patents for controlling media playback systems. The CAFC reversed the district court's unenforceability finding based on prosecution laches, concluding the district court abused its discretion in finding Google was prejudiced by Sonos' alleged delay in asserting the claimed subject matter via continuation practice. The decision references SCA Hygiene and statutory timeframes under 35 U.S.C. §286 and 35 U.S.C. 133. The district court had found a thirteen-year gap between Sonos' 2006 provisional filing and asserted overlapping zone scene claims filed in April 2019. The patents at issue include U.S. Patents 10,469,966 and 10,848,885.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday reversed-in-part and affirmed-in-part a district court decision that held various claims of Sonos' patents directed to controlling media playback systems invalid and unenforceable. Notably, the CAFC reversed the district court's finding with respect to unenforceability due to prosecution laches, holding 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 opinion was authored by Judge Lourie.
The 2017 U.S. Supreme Court decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC held that there could be no laches if a patent infringement litigation were commenced during the statute of limitations set forth in 35 U.S.C. §286. Similarly, there is a congressionally authorized timeframe within which an applicant must act in order to prosecute a patent application and avoid abandonment, set forth in 35 U.S.C. 133.
The district court found here that "Google had shown that Sonos 'was guilty of unreasonable and inexcusable delay in its prosecution of' the Zone Scene patents because Sonos filed the provisional application from which those patents claim priority in September 2006, but did not seek to claim overlapping zone scenes until thirteen years later, in April 2019."
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