Google LLC v. Sonos, Inc.

Background

The dispute concerns U.S. Patent No. 10,779,033, which addresses transferring a “remote playback queue” from a computing device to a playback device—for example, transferring a music playlist from a smartphone to a smart speaker.

Google asked for permission to file supplemental claim-construction briefing. Claim construction is the court’s process for determining the meaning of patent terms. Google based its request on statements Sonos’s Australian counsel made during prosecution of a related Australian patent application. The Australian application had the same title and nearly the same specification and figures as the U.S. patent.

During the Australian prosecution, the Australian patent office found that “remote playback queue” was not sufficiently disclosed. In response, Sonos’s counsel stated that the term in claim 1 referred to the queue the user was editing or managing in a third-party application, and that the term clearly meant the playback queue the user was managing in that application. Google argued that these statements were important admissions and new evidence because Google asserted that its accused “remote playback queue” was not part of a third-party application.

Sonos opposed the motion. It argued that much of the evidence supporting Google’s proposed construction was already available when the parties exchanged claim-construction briefing, and that Google was using the Australian statements to change its claim-construction strategy.

Court’s Analysis

The court proceeded cautiously because the Federal Circuit has warned against relying indiscriminately on prosecution of corresponding foreign applications. The court noted that patentability standards and examination practices differ between countries, and Sonos cited material suggesting that communications with the Australian patent office might not be admissible for claim-construction purposes under Australian law.

The court also found that the Australian and U.S. claims were not identical. The U.S. patent’s claim 1 referred to a remote playback queue provided by a cloud-based computing system associated with a cloud-based media service. The Australian claim referred to a queue provided by a computing system communicatively coupled to a zone player through at least a cloud-based network. The difference made the Australian statements less relevant to the U.S. patent.

Finally, the court concluded that, when read in context, the statements were not the kind of clear or “blatant admission” that would justify heightened scrutiny. They could fairly be understood as a narrow argument responding to the Australian patent office’s concern about whether “remote” could include a playback queue in a particular geographic location. Google’s view that the statements required a universal, limiting construction of “remote playback queue” was therefore unpersuasive.

Disposition

The court held that the foreign-counsel statements carried too little weight to justify revising Google’s claim-construction position. It stated that Google was seeking to revise its position based on statements made in a foreign proceeding about a limited issue involving a different claim, and that the statements were extrinsic evidence that did not sufficiently change the analysis.

Judge William Alsup denied Google’s motion for leave to file supplemental claim-construction briefing. The order did not decide the ultimate construction of “remote playback queue” or the merits of the parties’ patent dispute.