Google LLC v. Sonos, Inc.

Background

Sonos, Inc. asserted that Google LLC infringed U.S. Patent Nos. 9,967,615; 10,469,966; 10,779,033; and 10,848,885. The patents generally concern multi-room smart-speaker technology. The motion arose in Google’s declaratory-judgment action and a procedure in which each side moved for summary judgment on one claim in the case.

Sonos moved to strike portions of Google’s motion for summary judgment concerning noninfringement or invalidity of the ’615 patent, portions of the supporting report by Dr. Samrat Bhattacharjee, and Exhibits 10 and 14. Sonos argued that Google violated Patent Local Rule 3 by relying on new invalidity theories, prior-art references, or evidence that Google had not disclosed in its invalidity contentions.

Legal standard

The court explained that the patent local rules require early disclosure of infringement and invalidity contentions, while allowing amendment when discovery produces new information. The rules prohibit using expert reports or motion papers to introduce new theories, accused products, or prior-art references that were not disclosed in the required contentions. The rules do not require a party to identify every item of evidence that may later support a disclosed theory.

Rulings on the challenged material

Anticipation theory for claim limitation 13.4. Sonos argued that Google had changed its theory by relying on a menu button together with a “Connect” button, rather than relying only on the “Connect” button identified in its contentions. The court denied the motion to strike this material, finding that Google had consistently relied on the user pressing the menu and Connect controls and had merely explained its disclosed theory more fully.

Obviousness theory for claim limitation 13.4. Sonos challenged Google’s reliance on a particular disclosure in U.S. Patent No. 9,490,998. The court denied the motion to strike, finding that Google had already disclosed the reference and had cited it as supporting limitation 13.4. The additional citation was permissible evidentiary support rather than a new theory.

February 2012 YouTube Remote Wayback Machine capture. Sonos argued that Exhibit 14, a February 29, 2012, Internet Archive capture depicting an earlier version of the YouTube Remote system, had not been disclosed. The court denied the motion to strike. It found that the capture visually depicted the capability described in Google’s contentions and therefore supplied further evidence, not a new theory or prior-art reference. The court found the timing of Google’s production concerning but concluded that Sonos had not shown that it required striking the material.

July 2010 YouTube Remote application programming interface documentation. Sonos challenged Exhibit 10, a three-page document describing the application programming interface for the first release of the YouTube Remote application. The court denied the motion to strike. It found that the document contained the same key information about the “setPlaylist” message that Google had disclosed in its contentions. The court also concluded that Google’s use of a different document to support a disclosed theory did not violate the patent local rules.

July 2011 source code. Google had produced the July 12, 2011, YouTube Remote source code with updated invalidity contentions. Sonos questioned whether the reproduced code contained changes, but did not identify any specific changes beyond file dates. The court did not find a sufficient basis to strike the material on that ground.

November 2010 source code. Google produced the November 11, 2010, source code for the first time in March 2022 and argued that it showed the YouTube Remote system was prior art as of that earlier date. The court found that some differences between the November 2010 and July 2011 code were negligible, but that other differences involving the transfer of playlist playback to a television were substantial and related to claim limitations 13.5 and 13.6. Because Google had not amended its contentions to include the November 2010 code, the court held that Google could not introduce it as an alternative invalidity argument at summary judgment. The court struck paragraphs 133 and 138 through 141 of Dr. Bhattacharjee’s report in their entirety.

Pinpoint citations. Sonos also argued that Google’s contentions cited source-code directories and subdirectories without identifying specific files or line numbers. The court denied the motion to strike on this ground. It explained that pinpoint citations to source code are not always required and that Sonos had waited to seek court intervention until after Google filed its summary-judgment materials.

Disposition

The court granted in part and denied in part Sonos’s motion to strike. It struck paragraphs 133 and 138 through 141 of Dr. Bhattacharjee’s expert report in their entirety. The court denied the rest of the motion.