Patent law's delicate balance between invention protection and public interest takes center stage in our exploration of prosecution latches through the lens of the Google versus Sonos legal battle. This fascinating case reveals how a century-old legal doctrine continues to shape modern technology disputes and patent strategy.
When Sonos secured a $32 million jury verdict against Google for patent infringement related to Google Home technology, few expected the rollercoaster legal journey that followed. The verdict was overturned by a judge citing prosecution latches concerns, only to be recently reinstated on appeal. At the heart of this dispute lies a fundamental question: can patent owners rely on subject matter contained only in their provisional applications but omitted from non-provisional filings?
The case highlights the evolution of patent law since the 1920s when courts first recognized prosecution latches to prevent "submarine patents" - applications deliberately delayed until industries developed around the technology, creating lucrative infringement opportunities. The 1995 shift from measuring patent terms from issuance date to application date was intended to discourage such tactics, but the Sonos case demonstrates that provisional applications can still create complex legal scenarios.
For inventors and businesses, this case offers crucial lessons in patent strategy. As patent owners, including comprehensive details in provisional applications preserves future claiming options. For those conducting freedom-to-operate analyses, the case suggests expanding due diligence beyond granted claims to include prosecution histories - potentially more expensive but necessary in high-stakes technology areas. Call us at Milano IP to discuss how these principles apply to your intellectual property needs and how to navigate the evolving landscape of patent protection.