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Patents Laches Patent Applications

Alston & Bird

Patent Case Summaries | Week Ending August 29, 2025

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Global Health Solutions LLC, v. Marc Selner, No. 2023-2009 (Fed. Cir. (PTAB) Aug. 26, 2025). Opinion by Stark, joined by Stoll and Goldberg. “This case marks [the Federal Circuit’s] first review of an AIA derivation...more

Foley & Lardner LLP

Federal Circuit Skeptical of Prosecution Laches

Foley & Lardner LLP on

In Google v. Sonos, the Federal Circuit soundly disposed of arguments that the patent-in-suit was unenforceable due to laches based on an “unreasonable delay” in patent prosecution. Does the court’s reasoning foreclose the...more

Morrison & Foerster LLP

Federal Circuit Pushes Back on Prosecution Laches

In October 2023, we reported on the district court decision in Sonos, Inc. v. Google LLC. The decision was notable for reviving the prosecution laches doctrine to render unenforceable a continuation patent filed 13 years...more

Bradley Arant Boult Cummings LLP

The Federal Circuit Calls for a Replay Allowing Sonos Another Opportunity at Google

The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent...more

Morrison & Foerster LLP

Sonos v. Google Breathes New Life into Prosecution Laches Doctrine

A recent district court decision in Sonos v. Google has set forth a novel application of the prosecution laches doctrine to a patent with a post-1995 priority date. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320...more

Foley & Lardner LLP

Prosecution Laches—Another Arrow In The Quiver For Challenging Patents

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The Supreme Court recently declined to review Personalized Media Communications, LLC v. Apple Inc., where a divided panel of the Federal Circuit upheld the district court’s finding that a PMC patent is unenforceable due to...more

Knobbe Martens

Federal Circuit Review - June 2021

Knobbe Martens on

Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches - In Hyatt v. Hirshfeld, Appeal No. 18-2390, the Federal Circuit held that the PTO met its burden to prove prosecution laches for bulk-filed...more

McDermott Will & Schulte

Submarine Sunk: Patent Prosecution Laches Pops GATT Bubble

Addressing for the first time whether the US Patent & Trademark Office (PTO) can assert prosecution laches as a defense in a civil action brought under 35 U.S.C. §145, the US Court of Appeals for the Federal Circuit held that...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2021 #2

Gilbert P. Hyatt v. Andrew Hirshfeld, Appeal Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070 (Fed. Cir. June 1, 2021) - This week’s Case of the Week explores a long-running dispute between controversial...more

Fitch, Even, Tabin & Flannery LLP

Patent Applicants May Lose Rights by Causing Too Much Delay

On June 1, in Hyatt vs Hirshfeld, the Federal Circuit upheld the USPTO’s decision to reject a patent application for prosecution laches, based on delay by the applicant. The decision details behaviors that, while likely...more

Knobbe Martens

Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches

Knobbe Martens on

HYATT v. HIRSHFELD - Before Reyna, Wallach, and Hughes. Appeal from the United States District Court for the District of Columbia. Summary: The PTO met its burden to prove prosecution laches for bulk-filed patent...more

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