When David takes on Goliath in the tech world, it often makes headlines, but the real drama is sometimes buried in the legal details that most business owners never see.

That’s exactly what’s happening in the patent dispute between Sonos and Google. Sonos, a leader in wireless home audio, sued Google for infringing its patented multi-room speaker technology.

Earlier this year, a federal judge threw out a $30 million jury verdict against Google for infringement. The judge invalidated Sonos’s key patents, not because the ideas weren’t inventive, but because Sonos had initially filed narrow claims and later expanded them using a long-standing and widely accepted patent strategy. The court referred to this as prosecution laches. Now, the Federal Circuit Court of Appeals is set to decide whether this ruling will stand. If it does, it could fundamentally change how patents are drafted, prosecuted, and enforced.

At the heart of the case is a routine practice used by patent attorneys for decades: filing continuation applications to broaden or tailor claims in response to market changes or competitive workarounds.

Let’s say your company develops a groundbreaking technology and files a patent application. To get it allowed, your patent attorney narrows the claims to satisfy the patent examiner’s objections. That’s standard practice. But to keep options open, you also file a continuation application. This is linked to the original filing and allows you to pursue different or broader claims based on the same invention. That way, you get an initial patent but continue to seek broader coverage.

This has been a strategy for over 40 years. It’s beneficial when a competitor finds a clever workaround to your existing patent claims. If your original patent application is still pending, you can file a continuation application with new claims to cover the competitor’s product. The key is that the new claims must be supported by your original disclosure. You’re not changing your invention; you’re just ensuring your intellectual property keeps pace with the market.

In the Sonos case, the court said Sonos shouldn’t be allowed to assert broader claims in its continuation patent because 1) it had unreasonably and inexcusably delayed seeking broader claims and 2) the delay adversely affected Google. In effect, the judge ruled that Sonos was barred from expanding the scope later, even though the continuation was still pending.

If upheld, the ruling could significantly restrict your ability to modify your patent strategy over time. It would prevent businesses from making compromises during patent prosecution and increase the risks of pursuing follow-on applications, even when the invention stays the same but different claims are more thoroughly developed.

Most business owners don’t consider patent law until they need it. But here’s the truth: if you’re innovating, your intellectual property is one of your most valuable (and vulnerable) assets. Protecting that IP isn’t just about filing a patent and forgetting about it; you need a solid strategy. That strategy has always been to keep the original application pending, so you can pursue broader protection if required.

The ability to file continuation applications provides you with a legal “reserve force” that you can deploy when competitors enter your space. Without it, your first patent might be your only shot.

If the Federal Circuit upholds the Sonos ruling, businesses will need to reconsider how patents are drafted from the outset. That means:

• Filing broader initial claims and fighting hard to get them approved, which will likely increase appeals.
• Filing more claims in the initial filing, resulting in increased costs and complexity.
• Accepting that any claim you drop today might be gone for good.
• An increase in reissue practice to get the patent reissued with broader claims.

In other words, you’ll need to be more innovative and more aggressive about your patent strategy.

The Court of Appeals has invalidated patents for prosecution laches. However, these decisions relate to patent applications filed prior to 1995. In these cases, the patent owners were extending the term of their patent protection beyond the 17 years from issue by filing continuation applications. The patent term changed after 1995 to 20 years from filing, preventing patents from being enforceable beyond 20 years. This change may save the continuation strategy. We have to wait and see.

The patent process can be long and arduous. But if done well, it will give you a huge advantage over your competition. Without a patent, you’ll just get copied.

I’ve created a Guide and Checklist to help business owners identify their intellectual property. Click the button below to download a free copy.

 

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the new book, Invisible Assets – How to Maximize the Hidden Value in Your Business.

To get answers to your questions, let’s schedule a time to talk. You can access my calendar by clicking here, email Bill@IPGuy.com, or call me at 248-433-7381.