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Litigation News

Litigation News | 2024

Patents Held Unenforceable, Nullifying $32 Million Verdict

Josephine Bahn


  • Inventor’s delay following provisional applications triggers laches defense.
  • The court’s decision to overturn the jury verdict came after a multi-year battle that began with Sonos alleging that Google’s smart speakers and several other products are based on Sonos’s technology.
Patents Held Unenforceable, Nullifying $32 Million Verdict iantfoto via Getty Images

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A federal judge threw out a $32.5 million patent infringement verdict against Google after determining the plaintiff waited too long to enforce its claimed patents. In Sonos, Inc. v. Google LLC, the court held that Google should not be liable for Sonos’s claims based on old patents primarily because Sonos waited until the industry had developed “something new and, only then, [did the] inventor com[e] out of the woodwork to say that he had come up with the idea first.”

Provisional Patent Applications Followed by Substantial Delay

The court’s decision to overturn the jury verdict came after a multi-year battle that began with Sonos alleging that Google’s smart speakers and several other products are based on Sonos’s technology. Sonos had filed provisional patent applications regarding that technology in 2006. A provisional patent application is one that does not include a formal patent claim, oath, or declaration, but will establish a filing date for the applicant’s invention.

Sonos sued in 2020, accusing Google of copying Sonos’s technology in wireless audio devices, and claimed that Sonos had established its patent rights to this technology as of 2006 when it filed its provisional applications. Sonos initially requested that the court ban all U.S. sales of Google’s speakers, smartphones, and laptops. The parties engaged in multiple other lawsuits relating to technology ownership after the initial case was filed.

Delayed Patent Applications Voids Infringement Verdict

In May 2023, one of the cases proceed to trial. The court ordered that certain affirmative defenses would not be ruled upon until after the jury had decided the question of infringement. Sonos obtained the large jury award based on a single patent, but Google sought post-trial relief from the verdict on the grounds of laches. Google argued that Sonos had delayed applying for the actual patents for more than a decade after its provisional applications, and only after Google had introduced Google Home and Chromecast Audio—the technology that arguably infringed on Sonos’ patents.

The U.S. District Court for the Northern District of California held that it was improper for Sonos to attempt to connect its existing patents to the provisional applications filed in 2006 for multi-room audio technology, so as to try to prove that its technology predated Google’s devices. The court also held that connecting a 2019 patent application to the 2006 provisional application, when Google began selling its alleged infringing technology in 2015, negated Sonos’ argument. The judge determined that the products Google launched in 2015 “anticipated” the 2019 patents and therefore rendered them invalid.

The court determined that Sonos’ attempt to circumvent the patent system unfairly enriched Sonos and failed to protect other technology companies in the arena. Specifically, it that “it is wrong that our patent system was used in this way. With its constitutional underpinnings, this system is intended to promote and protect innovation. Here, by contrast, it was used to punish an innovator and to enrich a pretender by delay and sleight of hand. It has taken a full trial to learn this sad fact, but, at long last, a measure of justice is done.”

Strategy of Deferring Affirmative Defenses Applauded

ABA Litigation Section leaders observe that the judge could overturn the jury’s verdict because an equitable defense remained available to Google during the post-trial portion of the litigation. “A plaintiff’s case never gets better with time. Although deferring affirmative defenses until after a trial is certainly unusual, technically laches is an equitable defense, which should therefore be decided by the judge, rather than the jury,” says Aaron Krauss, Philadelphia, PA, Litigation Section Book Board member. “If the judge did not have the ability to rule on laches, it would have been interesting to see if the judge would have overturned the verdict under Rule 50(b),” he adds. Krauss also suggests that the advent of Google’s late use of the defenses allowed the judge to overturn a high dollar figure verdict because he disagreed with the merits of the jury’s outcome.

Deferring a decision on Google’s affirmative defenses yielded both strategic and practical benefits. “It worked out well for them. It was strategic in that it seems like a good idea to narrow the issues for trial to simply infringement. It makes the trial of the case less complicated, especially where you have a good number of defenses. It streamlines the trial. The judge will have a lot more time to consider the facts of a given case,” adds Matt C. Acosta, Dallas, TX, cochair of the Section’s Intellectual Property Litigation Committee.