Sonos, Inc. v. Google LLC

Background

Sonos brought this patent-infringement action against Google. An earlier order dismissed, while allowing amendment, Sonos’s claims for enhanced damages and indirect infringement involving U.S. Patent Nos. 10,469,966; 10,779,033; and 10,848,885. The earlier order addressed the pleading requirements for willful infringement and indirect infringement, including the need to plausibly allege that Google knew of the patents and the alleged infringement.

Sonos moved for leave to file a third amended complaint. Google opposed that motion and moved to stay issues related to the amendment while the Federal Circuit considered petitions for permission to appeal the earlier order. The Federal Circuit summarily denied both petitions, making Google’s motion to stay moot.

Analysis

Federal Rule of Civil Procedure 15 generally requires courts to freely allow amendments when justice requires. The court considered bad faith, undue delay, prejudice, whether amendment would be futile, and repeated failure to fix earlier pleading problems.

The court concluded that the proposed amendments were not futile. For the ’966 and ’033 patents, Sonos plausibly alleged that Google had enough notice and opportunity to investigate the patents and the alleged infringement before filing its declaratory-judgment action. The court held that these allegations were sufficient at the pleading stage to support a willful-infringement theory. Questions about Google’s actual intent and whether its conduct was sufficiently egregious could be addressed later, after a more complete factual record developed.

For the ’885 patent, Sonos alleged that it gave Google infringement information, including a representative claim chart and supplemental infringement contentions, before filing its first amended complaint. The court found that the alleged forty-day period gave Google a plausible opportunity to evaluate the allegations and was sufficient to support the willful-infringement claim at this stage.

The court also found that Sonos adequately revised its indirect-infringement allegations. It further found sufficient Sonos’s new allegations that certain accused software components lacked substantial noninfringing uses, addressing the earlier deficiency in the contributory-infringement claim.

The court found no bad faith or dilatory motive, no undue prejudice to Google, and no repeated failure by Sonos to cure pleading deficiencies. The court therefore concluded that the factors favored allowing amendment.

Disposition

The court granted Sonos’s motion for leave to amend. It denied Google’s motion to stay as moot. Judge William Alsup signed the order on June 7, 2022.