Sounding Off On Appeal

// One of the things that makes patent litigation such a fascinating field is that disparate cases, involving different parties and different technologies, can intersect in interesting ways. I may be in the minority, but I find such confluences exciting.

Last week, a prime example of this phenomenon came with the filing of a Federal Circuit brief in a high-profile case coinciding with the release of a Federal Circuit opinion in a different case, with the second case also involving another large technology company as a defendant. What linked the two events together? Both involved one of our country’s boldest IP jurists, the Northern District of California’s Senior Judge William Alsup.

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Unafraid to stake out definite positions on patent and other IP issues, especially in cases involving the large tech companies that call Northern California home, Alsup is perhaps best known on the IP front for his handling of the Uber/Waymo (Google) trade secret/patent dispute of 2018. Even though those two former combatants are now working together, Google continues to find itself embroiled in at least one other high-profile patent dispute, the ongoing dispute between Google and Sonos, including a case that went to trial before Alsup last year.

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I have covered events in that Sonos case on these pages before, from a 2021 post discussing Google’s attempts to have the case transferred to California from Texas, to Alsup’s issuance of an interesting pretrial order in May of last year. The one constant over the case’s lifespan has been the court’s view — that the approach of the parties to each other was both “emblematic of the worst aspects of patent litigation,” as well as a waste of resources that could be put to better use — evidently persisted all the way through trial and beyond. Even though the Court expressed those sentiments years ago, Sonos’ win before the jury was turned aside on post-trial motion in a decision finding the winning patents unenforceable and invalid based on prosecution laches. In particular, Alsup found major fault with Sonos’s reliance on a 2006 priority date for asserted patents that were not filed until 13 years later, or Sonos “wringing fresh claims to read on a competitor’s products from an ancient application,” in a way that “was used to punish an innovator and to enrich a pretender by delay and sleight of hand.” Animating Alsup’s aversion to Sonos’s use of what is pretty typical patentee continuation practice was his conclusion that he had been misled into accepting Sonos’s priority claim in the first place, as no one had told him that the asserted patents’ priority claim rested on a “sentence had been inserted by amendment in August 2019.”

Criticism from the pro-patentee camp of Alsup’s decision was quick to emerge, including a Patently-O characterization of it as one of the “most shocking patent decisions of 2023.” And in its recently filed CAFC appeal brief, Sonos takes direct aim at Alsup, claiming that he “rewrote patent law and reconstituted the judicial role to erase a $32.5 million jury verdict and throw out other patent claims that should have been tried.” Leaning hard on the idea that Sonos’s patenting strategy did not extend the term of Sonos’s patents, Sonos asks the CAFC to consider the implications of affirming Alsup’s approach, arguing that if the CAFC “condones this novel application of prosecution laches, it will endanger many thousands of patents secured through standard continuation practice and discourage the early and complete disclosure of new innovations.” While the appeal is in its earliest stages, and Google will surely do what it can to argue for affirmance, this will, no doubt, be an appeal to watch going forward, considering its potential impact on patent practice and the value of many existing patent portfolios built on standard continuation practice approaches.

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In an interesting twist, Sonos’s appeal brief was filed just a few days before a CAFC decision of note involving Alsup and another Silicon Valley giant, in this case, Meta (Facebook for those opposed to corporate rebranding efforts). In that case, the plaintiff MasterObjects had previously sued Google about a decade ago and had initially filed against Meta in the Western District of Texas. Meta was successful in having the case transferred to Alsup, but not before a claim construction order was issued out of WDTX. Still, Meta moved for summary judgment of noninfringement, which Alsup granted a few weeks before trial, in part by finding that the plaintiff was collaterally estopped from one of its claim construction positions, based on a prior construction of a related patent in the earlier Google case. The grant of summary judgment was reversed on appeal, however, with the CAFC panel finding that Alsup “erred in not considering any potentially material differences in the disclosures between the previously litigated patents” and the asserted patent in the Meta case. In addition, the CAFC panel also found that the actual claim constructions used by Alsup in his grant of summary judgment were faulty, thereby leading to reversal.

Ultimately, it is likely heartening to Sonos to see Alsup’s handling of another patent case get overturned by the CAFC in the same week that Sonos lodged its own criticisms of the same judge to the same appellate court. At the same time, there is no doubt that the length of the appellate process, even if successful for Sonos, will even further delay Sonos’s hopes for a major recovery from Google. What is not in doubt is that the CAFC’s treatment of one of 2023’s most “shocking” patent decisions is something that will be closely watched by many as the appeal unfolds over the course of 2024 and perhaps into 2025. For Sonos, the chance to sound off in the CAFC is welcome, even as they would have hoped that the underlying jury verdict would have remained intact.

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Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.

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Gaston Kroub, Google v. Sonos, Intellectual Property, Patents, William Alsup