The practice of serially filing continuation applications through a patent’s lifetime has come under increased pressure in recent years from newly implemented continuing application fees to expanded case law on non-statutory obviousness-type double patenting. A somewhat new interpretations of the doctrine of prosecution laches emerging from Sonos, Inc. v. Google, LLC in late 2023, however, that threatened an outright repudiation of the practice late into a patent’s 20-year term. In a post-trial motion, District Court Judge William H. Alsup set aside a $32.5M jury verdict that Google infringed Sono’s 10,469,966 and 10,848,885 patents, finding the patents unenforceable due to a 13-year delay from the priority date to the filing of the continuation applications that resulted in the patents at issue. Recently a Court of Appeals for the Federal Circuit (CAFC) panel of Chief District Judge Bumb and Judges Lourie and Prost reversed the finding of laches as unsupported by the evidence nonprecedential decision, stopping short of repudiating the possibility of finding laches for continuation applications filed late into a patent’s 20-year term.
