Google LLC v. Sonos, Inc.

Background

Sonos accused Google of infringing U.S. Patent Nos. 10,779,033, 10,848,885, and 10,469,966. The patents generally concern multi-room smart-speaker technology. The ’033 patent concerns transferring playback between devices, while the ’885 and ’966 patents concern managing groups of smart speakers.

Before trial, Sonos and Google each moved to strike portions of the other side’s expert reports. A motion to strike asks the court to remove material from a filing. Sonos argued that Google’s reports introduced new invalidity theories, new non-infringement theories, and new non-infringing alternatives after the relevant disclosure deadlines. Google argued that Sonos’s reports introduced new validity and infringement theories, a new claim construction, and new theories under the doctrine of equivalents.

Legal standard

The court explained that the patent local rules require early disclosure of infringement and invalidity contentions. Parties may not use expert reports to introduce new infringement theories, new accused products or systems, new invalidity theories, or new prior-art references that were not disclosed in those contentions. The court distinguished between an expert’s permissible application or explanation of a previously disclosed theory and an impermissible new theory. It also considered whether striking material would make the litigation more fair. Under the federal discovery rules, a party that fails to properly supplement discovery responses generally may not use the new information unless the failure was substantially justified or harmless.

Sonos’s motion to strike Google’s invalidity theories

Sonos sought to strike Google’s reliance on three categories of alleged prior-art material concerning the ’033 patent and related patents:

1. Tungsten/NexusQ “Magic Playlist.” The court declined to strike this material. It found that Google’s invalidity claim chart had disclosed the underlying theory by describing music being pulled from a cloud library and showing a playlist that could be made available offline. The court concluded that this information sufficiently disclosed Google’s theory that the Magic Playlist was a remote playback queue.

2. YouTube Remote “automatic playback.” The court also declined to strike this material. It found that Google’s claim chart included screenshots and a video showing playback of video queues from tabs other than the expressly labeled “Queue” tab. The court concluded that the theory that those queues could be remote playback queues was adequately disclosed.

3. Bose products. The court declined to strike material concerning the Bose Link communication protocol and Lifestyle SA-2 and SA-3 amplifiers. Although Sonos argued that Google had not timely disclosed those products as part of the Bose prior art, the court found that Google had disclosed them in an earlier expert report and had produced related documents earlier. The court also noted that Sonos’s expert had discussed the products and concluded that any nondisclosure was harmless.

Sonos’s motion to strike Google’s non-infringement theories

Sonos challenged six alleged new non-infringement theories in Google’s expert reports. The court found that none was actually new. It held that Google had sufficiently disclosed theories concerning whether messages sent through an MDx server were different, whether a video identifier was used to retrieve media, whether a device was configured to play a remote queue before playback transfer, whether a Google Hub was a claimed “computing device,” and whether a Google Hub’s pausing of playback affected infringement. The court also found that Google had sufficiently disclosed its theory that the accused controllers did not cause storage of zone scenes for purposes of the ’966 patent.

Sonos’s motion to strike Google’s non-infringing alternatives

Sonos challenged three alleged non-infringing alternatives. The court found that Google had disclosed an alternative involving a receiver device sending a request to a Onesie agent, and it found that much of another alternative concerning playback after transfer was already disclosed or was explanatory material.

The court did, however, grant Sonos’s motion as to relevant language in paragraph 280 of Dr. Samrat Bhattacharjee’s rebuttal report. The court found that Google had not disclosed the specific alternative under which video and audio would continue playing on the mobile device after playback was transferred. The court also granted Sonos’s motion as to paragraphs 178–81 of Dr. Dan Schonfeld’s rebuttal report. Those paragraphs presented a “No Identification of Groups as Zone Scenes” alternative that had not been included in Schonfeld’s opening report or in Google’s supplemented discovery responses. The court found that the nondisclosure was neither substantially justified nor harmless.

Google’s motion to strike Sonos’s theories

Google’s motion challenged Sonos’s expert material in several categories, and the court denied the motion in its entirety.

The court declined to strike Dr. Douglas Schmidt’s discussion of the claim term “playback queue.” It found that Schmidt was applying the court’s existing construction in response to arguments by Google’s expert, rather than proposing a new claim construction.

The court also declined to strike Sonos’s theories involving “PlaylistService” and “BigTable.” It found that Sonos had timely disclosed its theory that the accused remote playback queue was stored in the cloud. Sonos was not required to identify every document or source-code file supporting that theory or to specify the name of the distributed storage system in its earlier disclosures.

The court further declined to strike Sonos’s theories concerning Google Hub devices. It found that Sonos’s infringement contentions did not limit its theory to one method of initiating playback and that the contentions gave Google notice that playback could be initiated through casting or voice commands.

Finally, the court declined to strike Schmidt’s doctrine-of-equivalents opinions. The doctrine of equivalents is a patent-law theory that can treat a product feature as infringing even when it does not literally match a claim limitation if the differences are legally equivalent. The court found that Schmidt’s opinions were responsive to non-infringement positions the court did not strike.

Disposition

Judge William Alsup ordered that Sonos’s motion to strike was GRANTED IN PART and DENIED IN PART. The order struck part of paragraph 280 of Dr. Bhattacharjee’s rebuttal expert report and paragraphs 178–81 of Dr. Schonfeld’s rebuttal expert report. Google’s motion to strike was DENIED in its entirety. The order concerned what expert-report material could remain in the case; it did not resolve the underlying patent infringement or patent-validity questions.