Cause for Concern Regarding Continuation Practice?

A recent court decision from the Northern District of California may significantly impact a common strategy, long accepted and practiced among patent holders. The strategy is fairly simple; keep at least one continuation patent application pending to preserve the ability to carve additional scopes of protection from the application’s disclosure. Such continuation filing practice, if navigated properly, can be used offensively against third parties that are practicing very close to the patent holder’s already-issued scope(s) of protection. In particular, by keeping a continuation application pending, the patentee can use that application to craft its claims to cover the third-party activities.

The ruling from the California Northern District case (Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023) deemed the subject patents to be unenforceable, generally due to laches, despite the patentee diligently prosecuting applications over a period of 13 years and filing a continuation with each allowance received.

The court decision appears to jeopardize patents issuing from pending continuation applications, long after issuance of a parent patent. While concerning, we would certainly not want to overreact. We anticipate that an appeal will be filed in this case. While it is not clear how the U.S. Federal Circuit Court of Appeals would respond, we plan on following future developments and keep readers and clients updated. In the interim, if you have any questions, please contact us.

  • John S. Parzych

    John is a shareholder in Fredrikson’s Intellectual Property Group. He is registered to practice before the U.S. Patent and Trademark Office. His practice focuses on patent preparation and prosecution, counseling clients ...

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