Prosecution Laches: No Good Deed Goes Unpunished!
Prosecution laches is an infrequently used equitable doctrine that bars enforcement of a patent when the patentee has unreasonably delayed prosecution in a way that prejudices others. It is most commonly used by accused infringers as a defense in patent litigation, although the USPTO can also use it as a basis for refusing allowance. Regardless, it is most often used against the backdrop of multiple continuation applications.
Continuation applications are applications which all follow from (i.e., claim priority to) a single earlier application. Creating “families” of patent applications in this way is a very common practice and allows the patent owner to claim different embodiments of the original invention in response to changes in marketplace and/or technological evolution.
In Sonos Inc. v. Google LLC, currently on appeal to the Federal Circuit, the district court, following a jury verdict in favor of the patentee, found Sonos’ patents unenforceable due to prosecution laches, despite Sonos diligently prosecuting continuation applications for 13 years, serially filing a continuation with each allowance. If upheld, the ruling will represent a notable change to patent practice with far-reaching effects for U.S. innovators of all stripes including, independent innovators, corporate innovators, and universities.
This FedSoc forum will use the Sonos v. Google and other laches cases as needed to explore the conflict between prosecution laches and current continuation practice and much more.
Featuring:
- Joseph Matal, Principal, Clear IP, LLC
- Paul Michel, Former Chief Judge, United States Court of Appeals for the Federal Circuit
- Gene Quinn, President & CEO, IPWatchdog, Inc.
- Moderator: Jeffrey Depp, Policy Consultant, Center for Strategic and International Studies
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To register, click the link above.
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As always, the Federalist Society takes no position on particular legal or public policy issues; all expressions of opinion are those of the speaker.