What Sonos v. Google means for a continuation you file next month

What did the Federal Circuit decide?

The jury found that Google infringed claim 1 of the ’885 patent, found no infringement of the ’966 patent, and awarded Sonos “just over $32.5 million” (slip op. at 7). After trial, the district court held both patents unenforceable for prosecution laches. It also held that the 2019 amendment was new matter, gave the claims an August 2019 priority date, and held them invalid (slip op. at 8–9).

The Federal Circuit reversed both rulings.

• Written description. The court did not need to decide whether the 2019 amendment was new matter. Text accompanying Figs. 3A and 3B described a “Morning” scene and an “Evening” scene sharing the same rooms. That text “appeared verbatim” in the 2007 application (slip op. at 12–14).
• Prosecution laches. Google failed to prove prejudice, so the defense failed (slip op. at 15–17).
• The ’033 patent. Summary judgment of obviousness was affirmed (slip op. at 17–18).

The court told the district court to consider “any remaining motions mooted by its judgment” (slip op. at 19). The opinion does not use the word “reinstated”.

Why did prosecution laches fail?

The defense has two elements: delay that was unreasonable and inexcusable under the totality of the circumstances, and prejudice attributable to that delay (Hyatt v. Hirshfeld, 998 F.3d at 1362, cited at slip op. 15). Prejudice requires intervening rights: evidence that someone “invested in, worked on, or used the claimed technology during the period of delay.”

Google lost on prejudice for two separate reasons.

1. No evidence. Google said its investment began “by at least 2015” but offered no testimony or other evidence for it (slip op. at 16).
2. The disclosure was already public. Even taking 2014 or 2015 as true, the specification had published when the 2007 application issued in July 2013.

“Google cannot be prejudiced by incorporating into its products a feature that was publicly disclosed in a patent application prior to its investment.” (slip op. at 16)

The court framed the delay as one “in claiming, but not disclosing” the feature (slip op. at 17). That distinction is the practical core of the case.

What did the decision leave open?

• Whether 13 years was unreasonable. The court limited its discussion to prejudice. The delay question was not decided.
• Binding effect. The opinion is nonprecedential. It signals how one panel applied existing law; it does not bind later panels.
• Unpublished specifications. The reasoning turned on a specification public since 2013. A family whose disclosure stayed unpublished during a competitor’s investment would not fit it.

Does prosecution laches still apply?

Yes, in extreme cases. Gilbert Hyatt filed nearly 400 applications in the months before June 8, 1995 (Hyatt v. Stewart, slip op. at 2). In Hyatt v. Hirshfeld (2021), the Federal Circuit held that the USPTO had shown unreasonable and unexplained delay. It vacated and remanded so Hyatt could present evidence on whether the delay was prejudicial (Hyatt v. Stewart, slip op. at 4–5). It did not itself affirm unenforceability.

On remand the USPTO won. The Federal Circuit affirmed in Hyatt v. Stewart, 148 F.4th 1376 (Fed. Cir. Aug. 29, 2025). The Supreme Court denied cert on June 29, 2026 and rehearing on Sept. 4, 2026 (No. 25-1049).

Read together: Sonos shows a laches defense failing for lack of prejudice; Hyatt shows the doctrine still has force when delay is extreme.

What does this mean for a continuation you file next month?

Suppose a competitor has just launched a product and a family member is still pending. These points follow from the opinions above. They are for review by your registered patent practitioner.

1. Confirm the family is still open

A continuation needs a pending parent. Once the last pending member issues or is abandoned, the disclosure can no longer support new claims in that family. See the continuation deadline.