Google LLC v. Sonos, Inc.
- Edward Chen
- 3:20-cv-03845
- U.S. District Court · Northern District of California
- 11
In Google v. Sonos, Judge Hixson granted Sonos leave to amend its patent-invalidity contentions after Google amended its infringement contentions.
Sonos was permitted to amend its invalidity contentions, and Google must respond to the additional detail in those contentions; the order did not decide whether the patent was valid or infringed.
What happened
In Google LLC v. Sonos, Inc., Sonos asked to add detail to its existing argument that its own earlier work made Google’s patent invalid. The request responded to Google’s amended allegations that Sonos products infringed the patent.
Sonos said Google’s amended allegations identified specific Sonos source code for the first time, allowing Sonos to investigate whether that functionality existed before the patent’s priority date. Google took no position on whether Sonos had shown good cause, but disputed Sonos’s characterization of the case and asserted prejudice.
Judge Thomas S. Hixson granted Sonos’s motion. He found that Sonos acted diligently, that the amendment responded to Google’s amended contentions, and that Google would not suffer undue prejudice because it had notice of the theory and had time to respond.
The detailed version
- Google LLC v. Sonos, Inc. · No. 3:20-cv-03845
- Edward Chen
- Sept. 7, 2021
Background
Google alleged that Sonos infringed claims of U.S. Patent No. 10,229,586 by making, using, importing, selling for importation, and selling certain Sonos products in the United States. Sonos had previously disclosed an invalidity theory based on its own earlier system, source code, and work. Sonos’s initial invalidity contentions stated that Sonos had conceived of and reduced to practice an audio-enabled wireless device using two-way communication in a wireless mesh network before May 27, 2004, and charted that system against each asserted claim.
Google later served amended infringement contentions containing pinpoint citations to Sonos source code. Sonos argued that these new citations identified specific code and functionality that Google claimed satisfied particular patent limitations. Sonos sought leave to amend its invalidity contentions to provide additional detail tying the same functionality to Sonos’s alleged prior invention. Sonos said it was not adding a new invalidity theory.
Google took no position on whether Sonos could establish good cause on the record, but disputed Sonos’s claims about responsibility for the timing and stated that it was prejudiced by the proposed contentions.
Legal standard
Patent Local Rule 3-6 allows amendment of infringement or invalidity contentions only by court order after a timely showing of good cause. The moving party must show diligence in discovering the basis for amendment and seeking amendment, and the court considers whether the opposing party would suffer prejudice.
Court’s analysis
Judge Thomas S. Hixson found good cause because Sonos’s proposed amendments directly responded to Google’s amended infringement contentions. The court noted that courts generally allow a party to amend invalidity contentions in response to amended infringement contentions, particularly when the amendment adds detail to an existing theory rather than introducing a new one.
The court also found that Sonos acted diligently. After receiving Google’s amended contentions on March 15, 2021, Sonos spent less than two months reviewing the cited source code and investigating whether the accused functionality had been invented before the patent’s priority date. Sonos then prepared a claim chart, notified Google, and filed the motion after giving Google time to state its position.
The court found no undue prejudice to Google. Sonos’s initial contentions had already disclosed the theory that Sonos’s own system was prior art and had cited Sonos documents and source code. The proposed amendment supplied more detail in response to Google’s amended contentions. The court also stated that no fact-discovery, expert-discovery, or trial deadlines had been set, leaving Google ample time to investigate and respond.
Disposition
The court granted Sonos’s motion for leave to amend its invalidity contentions. The opinion’s conclusion says that the court granted Sonos’s motion to amend its “infringement contentions,” but the motion title, analysis, and ruling concern Sonos’s invalidity contentions. The court also vacated the scheduled hearing.
Read the full 11-page opinion on CourtListener, the free public archive maintained by the Free Law Project.