Google LLC v. Sonos, Inc. ( 2022 )

1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 NORTHERN DISTRICT OF CALIFORNIA 8 9 10 GOOGLE LLC, 11 Plaintiff, No. C 20-06754 WHA 12 v. 13 SONOS, INC., ORDER DENYING LEAVE TO FILE SUPPLEMENTAL CLAIM 14 Defendant. CONSTRUCTION BRIEFING 15 16 17 18 Google has filed a motion for leave to file supplemental claim construction briefing (Dkt. 19 No. 375). The basis for its motion is its recent discovery of statements made by Sonos’s 20 Australian counsel during the foreign prosecution of an “Australian counterpart” to U.S. Patent 21 No. 10,779,033. Sonos opposes, arguing that the statements it made in the Australian 22 prosecution do not justify revisiting settled claim construction positions (Dkt. No. 389). This 23 motion is suitable for resolution on the papers. Civ. L.R. 7-6. 24 The ’033 patent is directed to transferring playback of a “remote playback queue” from a 25 “computing device” to a “playback device.” In plain English, the patent relates to, for example, 26 transferring audio playback of a music playlist from a smart phone to a smart speaker. While 27 this case was in the Western District of Texas, Google sought to construe the term “remote 1 this case was transferred here, however, Google dropped the term from its disclosures and 2 abandoned its claim construction position. 3 Meanwhile, in September 2020, Sonos began prosecuting a similar patent application in 4 Australia. The Australian application shares the same title and virtually the same specification 5 and figures as the ’033 patent. During prosecution, the Australian patent office found that the 6 term “remote playback queue” was not sufficiently disclosed. In response, Sonos’s counsel 7 made certain statements to the Australian patent office related to the scope of the term. Most 8 pertinently, Sonos counsel stated in June 2022 that the “‘remote playback queue’ referred to in 9 claim 1” of the Australian counterpart “corresponds to the queue that the user is 10 editing/managing in the third party application.” Sonos counsel then went on to state that the 11 “meaning of remote playback queue would clearly be the playback queue that the user is 12 managing in the third party application” (Exhs. 10–11). 13 These statements are problematic for Sonos because Google asserts that its accused 14 “remote playback queue” is not part of a third-party application. Thus, Google argues that these 15 statements qualify as “crucial admissions” and “new evidence” that justify revisiting claim 16 construction positions (Br. 11–12). Sonos responds, in part, that the bulk of any evidence that 17 would justify Google’s proposed construction was available to Google when the parties 18 exchanged claim construction briefing in March 2022. Sonos asserts that Google is using the 19 Australian statements as a ploy to reshuffle its claim construction strategy, and that our Patent 20 Local Rules were designed to eliminate such “gamesmanship” (Opp. 15–16). 21 Upon review, this order sides with Sonos. First, the Court of Appeals for the Federal 22 Circuit has “caution[ed] against indiscriminate reliance on the prosecution of corresponding 23 foreign applications in the claim construction analysis” because “the theories and laws of 24 patentability vary from country to country, as do examination practices.” AIA Eng’g Ltd. v. 25 Magotteaux Int’l S/A, 657 F.3d 1264, 1279 (Fed. Cir. 2011) (citation omitted). Here, Sonos has 26 cited material suggesting that correspondence between an applicant and the Australian patent 27 office may not be admissible for the purposes of claim construction under Australian law (Opp. 1 proceeding in which the patentee had every incentive to exercise care in characterizing the 2 scope of its invention.” Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. 3 Cir. 2004). This order therefore proceeds cautiously. 4 Second, although the two patents are related and share a familial relationship, their claims 5 are not identical. In particular, claim 1 of the Australian application — the claim referred to in 6 the statements above — is not identical to claim 1 of the ’033 patent. Claim 1 of the ’033 patent 7 recites “a remote playback queue provided by a cloud-based computing system associated with 8 a cloud-based media service,” whereas claim 1 of the Australian application recites “a remote 9 playback queue provided by a computing system that is communicatively coupled to the zone 10 player via at least a cloud-based network . . . .” This casts doubt on the relevance of the 11 statements to the ’033 patent. See, e.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1313 (Fed. 12 Cir. 2014), overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 13 (Fed. Cir. 2015) (finding statement made during foreign prosecution persuasive in part because 14 the foreign application “contained a claim identical to” the claim at issue). 15 Third, when read in context, this order agrees with Sonos that the statements do not 16 qualify as the sort of “blatant admission” that warrants heightened scrutiny. Cf. Gillette Co. v. 17 Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (finding “blatant admission by 18 this same defendant before the [European Patent Office] clearly support[ed]” its claim 19 construction holding). The statements can be fairly read as a narrow argument proffering a 20 counterexample against the Australian patent office’s specific concerns over whether meaning 21 of the term “remote” could accommodate a “playback queue” located in a certain “geographic 22 location.” Put differently, Google’s assertion that the statements advocate for a universal and 23 limiting construction of “remote playback queue” is not convincing. 24 At bottom, this order finds that the statements carry too little weight to grant Google’s 25 request. Google wants to revise its claim construction position based on statements made by 26 foreign counsel in a foreign proceeding addressing a limited issue over a different claim. This 27 does not persuade. If Google did not consider the intrinsic evidence strong enough to weigh in 1 its favor to advocate for its proposed construction earlier, the extrinsic statements here would 2 not have been afforded enough weight to move the needle. Google’s motion is DENIED. 3 4 IT IS SO ORDERED. 5 6 Dated: December 21, 2022. Pee g Al - LLIAM ALSUP 9 UNITED STATES DISTRICT JUDGE 10 11 12 13 © 15 16 = 17 Z 18 19 20 21 22 23 24 25 26 27 28