Google LLC v. Sonos, Inc.

Background

A July 2022 order granted Sonos summary judgment on infringement of claim 1 of United States Patent No. 10,848,885. That order also rejected Google’s arguments that claim 1 covered unpatentable subject matter under 35 U.S.C. § 101 and lacked written-description support under 35 U.S.C. § 112. The court then ordered Google to show why summary judgment should not be entered for Sonos on patent validity.

Google’s New Theories

In response, Google abandoned the invalidity arguments it had made in its summary-judgment briefing and instead asserted new theories. Google argued for the first time that the claim was obvious in light of Sonos prior art and online forum posts by third parties, and that disputed facts existed about whether third-party prior-art speaker systems invalidated the patent.

Google argued that it should be allowed to change its arguments because it had relied on claim-construction rulings issued before the case was transferred. The court rejected that explanation. It said the earlier rulings were not binding law of the case, the July order had adopted the earlier construction verbatim, and Google had already addressed in its briefing and at oral argument the possibility that the claim’s “common theme” requirement could be satisfied by allowing users to name and save speaker groups.

Ruling

The court held that Google had been aware of the relevant issue but chose not to present certain invalidity theories. It ruled that Google could not change course after learning how the court viewed the case and that those theories were waived. The court concluded that Google’s response did not change its earlier conclusions and granted summary judgment in favor of Sonos on the issue of validity of the ’885 patent.