Prosecution Laches and the Death of Continuations
Last week we held our annual patent portfolio management program, during which we discussed the business, law and patent prosecution realities associated with building and maintaining the patent portfolio companies need, whether as the result of organically created and protected innovation, as the result of portfolio growth through M&A, or due to strategic patent portfolio acquisition.
One of the more important conversations from the patent owner perspective dealt with how to responsibly and continuously grow a patent portfolio through the use of continuations. At first glance you might want to dismiss this conversation as ordinary, not provocative and unworthy of attention. Not so fast!
Ordinarily, patent practitioners do not need to really think about prosecution laches, but laches has become a rather hot topic as the United States Patent and Trademark Office (USPTO) and courts have initiated what can only be characterized as an assault on an applicant’s statutory right to seek and file additional claims if those claims are supported by the initial disclosure.
In the courts, this recently came to light when a district court found Sonos patents at issue in their patent litigation against Google were unenforceable due to prosecution laches because Sonos filed a continuation. Never mind that the claims were supported by—and actually incorporated from—an earlier filing. According to the district court, because Sonos could have filed those claims in the continuation earlier, that created a laches defense for Google.
Obviously, the district court is wrong, and the case is on appeal to the Federal Circuit. Unless the Federal Circuit wishes to upset the very foundation of patent prosecution in America, the filing of a continuation cannot legitimately—either legally, practically or rationally—lead to a finding of laches. The statute gives patent owners the right to file continuations, the USPTO remains under an injunction ordering the agency not to disturb continuation practice, which dates all the way back to the Office’s failed attempts to limit the number of claims and continuations an applicant could file.
Interestingly, while the attention of the courts and the USPTO is focusing on the fact that claims in a continuation could have been filed earlier, neither the courts nor the USPTO seem to want to acknowledge that the filing of continuations is generally necessitated by patent examiners refusing to give the breadth of claims the applicant is truly entitled to until continuations and requests for continued examination have been filed and the examiners have earned additional production toward their quota. You see, examiners have to produce so much work to stay in good standing and retain their jobs, and one way many examiners guarantee this is by giving patent applicants the claims they are entitled little by little, so they get numerous additional filings associated with applications they have already fully reviewed.
In any event, prosecution laches is only supposed to apply in egregious cases of unreasonable and unexplained delay in prosecution. And a finding of prosecution laches is supposed to require that the accused infringer suffered prejudice as a result of egregious applicant delay by proving investment in, work on, or use of the claimed technology during the period of delay. Last year the Federal Circuit ignored the requirement of prejudice when it found that PMC engaged in egregious and unreasonable delay, which result in a finding of laches in Apples favor despite the fact that Apple did not even start any infringing activity until years after the delay ended, which as Judge Stark pointed out in dissent meant that Apple failed to prove prejudice required as the result of applicant delay.
So, it is against this backdrop, in an era where prosecution laches is becoming a more effective tool to excuse infringement, that we last week discussed the problem, what companies can and should be doing differently, if anything, and why being able to add patents through the use of continuations is critical for innovators.
This podcast is a portion of my conversation with Dean Geibel, Chief Patent Counsel for Samtec, Inc., and Eric Foster, Intellectual Property Counsel for First Solar, Inc.
Gene Quinn
Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people […see more]
