Google LLC v. Sonos, Inc.

Background

Sonos moved for permission to amend its infringement contentions concerning U.S. Patent No. 10,779,033. Infringement contentions are a party’s required statements identifying how it claims the opposing party infringes a patent. Sonos brought the motion under Patent Local Rule 3-6, which allows amendments only by court order and upon a timely showing of good cause.

Sonos said the amendment was necessary because it discovered new information during the November 11, 2022, deposition of Tavis Maclellan, a Google witness designated under Federal Rule of Civil Procedure 30(b)(6). Sonos had first served a deposition notice seeking testimony about its “stream transfer” infringement theory on January 5, 2022. Google initially designated two witnesses, whom Sonos objected to as not competent to testify on the subject. After Google declined to designate a third witness, Sonos moved to compel on October 14, 2022. Google later designated Maclellan before the court ruled on that motion, making the dispute over the witness moot. Sonos then took Maclellan’s deposition and filed the amendment motion.

Arguments

Google argued that Sonos could have developed its theory earlier by investigating source code that Google had already provided. Google also argued that the proposed amendments were overbroad and belatedly added a “completely new theory of infringement,” causing prejudice at that stage of the case.

Sonos argued that it was entitled to conduct discovery about how the source code worked. It relied on Maclellan’s testimony, which Sonos said confirmed aspects of its infringement theory.

Ruling

Judge Liam Alsup found that Sonos had adequately shown diligence. The court concluded that Sonos’s efforts to obtain appropriate testimony, including its deposition of Maclellan after Google designated him, satisfied the diligence requirement under Patent Local Rule 3-6.

The court also rejected Google’s objections to the scope of the amendments. It found that the challenged amendments cited the new testimony and related source code. The court stated that any resulting prejudice was caused by Google’s failure to respond timely and appropriately to Sonos’s discovery request.

The court held that Sonos had good cause to amend and granted the motion. The court further ordered that any motion to modify the case schedule because of the order had to be submitted within five days. The order did not decide whether Sonos’s infringement theory was ultimately correct.