Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 1 of 10
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`GOOGLE LLC,
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`Plaintiff,
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`v.
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`SONOS, INC.,
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`No. C 20-06754 WHA
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`ORDER RE MOTION TO STRIKE
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`Defendant.
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`INTRODUCTION
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`In this patent infringement action, patent owner asserts that alleged infringer has violated
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`this district’s Patent Local Rules by incorporating references and theories in its summary
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`judgment filings and corresponding expert report not disclosed in its invalidity contentions. To
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`the following extent, patent owner’s motion to strike is GRANTED IN PART and DENIED IN
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`PART.
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`STATEMENT
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`The facts in this matter are well known and described previously (No. C 21-07559 WHA,
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`Dkt. No. 156). Patent owner Sonos, Inc. asserts that Google LLC infringes U.S. Patent Nos.
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`9,967,615; 10,469,966; 10,779,033; and 10,848,885. The patents generally concern multi-room
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`“smart” speaker technology. This motion practice takes place in the context of Google’s
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`declaratory judgment action.
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 2 of 10
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`Relevant here, an October 2021 order scheduled a “patent showdown” procedure, wherein
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`each side moves for summary judgment on one particular claim-in-suit. The parties have now
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`filed their briefing for the patent showdown, supported by expert declarations. Sonos now
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`moves to strike the following from Google’s motion for summary judgment of noninfringement
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`or invalidity of the ’615 patent for improperly asserting new invalidity arguments and prior art
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`references:
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`1. Page 19, lines 1–7; page 20, lines 3–6, 11–14 from Google’s motion for summary
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`judgment;
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`2. Paragraphs 133–34, 136–37, 139–41, 143–45, 149, 158–60, 169–71, 180, and 182
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`from the supporting expert report of Dr. Samrat Bhattacharjee;
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`3. Exhibits 10 and 14 to Google’s motion for summary judgment.
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`This order follows full briefing and oral argument.
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`ANALYSIS
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`Our patent local rules streamline discovery and seek to quickly uncover the primary
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`disputes in the action. They require the parties to disclose their infringement and invalidity
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`contentions early, but permit amendment as new information comes to light in discovery. O2
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`Micro Int’l Ltd. v. Monolithic Pwr. Sys., Inc., 467 F.3d 1355, 1365–66 (Fed. Cir. 2006).
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`Pursuant to Patent Local Rule 3, a party may not use an expert report or motion memoranda “to
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`introduce new infringement theories, new infringing instrumentalities, new invalidity theories,
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`or new prior art references not disclosed in the parties’ infringement contentions or invalidity
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`contentions.” See ASUS Computer Int’l v. Round Rock Research, LLC, 2014 WL 1463609, at
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`*1 (N.D. Cal. Apr. 11, 2014) (Judge Nathaniel M. Cousins). Such an infraction may be subject
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`to a motion to strike, but the rules do “not require identification of every evidentiary item of
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`proof.” See Oracle Am., Inc. v. Google Inc., 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26,
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`2011).
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`This order considers each issue flagged by Sonos in turn.
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`1.
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`ANTICIPATION THEORY FOR LIMITATION 13.4.
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 3 of 10
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`Claim limitation 13.4 of the ’615 patent recites: “detecting a set of inputs to transfer
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`playback from the control device to a particular playback device, wherein the set of inputs
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`comprises: (i) a selection of the selectable option for transferring playback from the control
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`device and (ii) a selection of the particular playback device from the identified playback devices
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`connected to the local area network.” Sonos argues that Google asserts a new anticipation
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`theory for the limitation that it did not include in its contentions. Specifically, while the
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`contentions only identified a “Connect” button as teaching limitation 13.4, the motion “changes
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`its theory by now pointing to a never-before identified ‘menu’ button and claims that section of
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`that button in combination with selection of the ‘Connect” button disclose this claim element”
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`(Br. 4). Here is the side-by-side Sonos used in its motion (Br. 5):
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`Google argues that “Sonos has been on notice that selection of the Connect icon requires a
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`user to press menu in order to bring up the Connect icon” and notes that the menu button is
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 4 of 10
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`visible in both screenshots Sonos compares (Opp. 10–11). More importantly, item [4] — cited
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`in the contentions and where the relevant image originated — specifically states that a user must
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`“press menu and connect” (Contentions at 18, Caridis Decl. Exh. A).1
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`Upon review, this order declines to strike Google’s statements here. The material at issue
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`does not qualify as a new anticipation theory. Rather, Google has spelled out what its invalidity
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`contentions recite. A party may not conceal its theories from disclosure in its contentions, but a
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`party need not compose its dispositive briefing in its contentions, either. The decision in
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`Largan Precision Co., Ltd. v. Genius Electronic Optical Co., 2014 WL 6882275 (N.D. Cal.
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`Dec. 5, 2014) (Judge James Donato), does not support striking this material. Largan struck
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`portions of an expert report that used uncited portions of a prior art reference (a patent) because
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`none of the references to the patent in the party’s contentions disclosed the theory being
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`asserted by the expert. Id. at *5. Sonos contends “[p]ointing to a new portion of a reference is
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`not ‘additional explanation’ of a previously-disclosed theory, it is a new theory” (Reply Br. 5).
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`But that is not quite the same thing. Google’s anticipation theory on this point has remained
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`consistent. Recognizing Sonos’s concerns, on balance, this order finds fairness best served by
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`denying the motion to strike as to this material and addressing these issues on the merits.
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`2.
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`OBVIOUSNESS THEORY FOR LIMITATION 13.4.
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`The answer is the same for Google’s obviousness theory for claim limitation 13.4.
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`Google argues in its summary judgment motion that the limitation is obvious in part because
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`U.S. Patent No. 9,490,998 discloses that “the ‘user interface’ of the Remote Control may
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`display the ‘previously paired controlled devices’ so that a user may select and control ‘one or
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`more paired controlled devices’” (Dkt. No. 221 at 20, citing ’998 patent at 10:62–11:6). Sonos
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`objects that Google never cited to this specific disclosure in its invalidity contentions. Google
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`did, however, disclose that it was relying on this reference to meet limitation 13.4 (Contentions
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`at 18–20, citing 4:21–57, 4:48–67, 8:1–59, and figure 1). Each of these citations generally
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`disclose various ways a remote control may be paired with controlled devices (Opp. 13). The
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`1 Citing https://www.youtube.com/watch?v=EGdsOslqG2s at 0:53–1:09 (last visited May 18,
`2022).
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 5 of 10
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`citation to 10:62–11:6 accordingly qualifies as permissible additional evidentiary support rather
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`a new theory.
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`3.
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`FEBRUARY 2012 YOUTUBE REMOTE WAYBACK MACHINE
`CAPTURE.
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`Next, we consider exhibit 14 — a Wayback Machine capture dated February 29, 2012, of
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`a website purportedly depicting a version of the YouTube Remote system from January 25,
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`2012 (Dkt. No. 211-14). Sonos argues Google never disclosed this version of the system and
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`that “[i]nstead, in its contentions, Google specifically cited to an October 14, 2011 Wayback
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`Machine capture showing an earlier, different version of the YouTube Remote System” (Br. 8).
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`Google explains that its invalidity contentions do not constitute a prior art document, and
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`that the webpage capture in question illustrates the description of the prior art in the
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`contentions:
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`Google’s Infringement Contentions
`(Contentions at 18)
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`Wayback Machine Capture
`(Dkt. No. 211-14)
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`The YT Remote System implicitly detects a
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`set of inputs once the “connect” option is
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`selected, based on devices on the same LAN
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`for which user is logged in, e.g. a TV screen
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`logged into the user’s YouTube account.
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`Sonos argues “the original 2011 capture and corresponding narrative explanation do not portray
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`a display that allows a user to select and control a particular paired controlled device” (Reply
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`Br. 9). But, as shown, Google stated in its contentions that the YouTube remote system can
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`detect a set of inputs based on devices on the same LAN for which the user is logged in, such as
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`a television. Google’s summary judgment motion merely visually depicts that capability. The
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`capture, consequently, does not constitute a new theory or prior art reference but further
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`evidentiary support.
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`Sonos also notes how Google did not produce exhibit 14 (and exhibit 10 discussed below)
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`until it filed its motion for summary judgment (Reply Br. 10). This order finds this apparent
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`delay concerning as it suggests a measure of gamesmanship the patent local rules seek to stamp
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`out. Nevertheless, our patent showdown procedure requires the parties to move expeditiously
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`towards a merits determination while fact discovery is ongoing. This inherently entails the
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`possibility that a given document may be produced contemporaneously with a party’s summary
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`judgment motion. Without further indications of an improper motive, and so long as the party’s
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`contentions disclose the theory and/or prior art reference per Patent Local Rule 3, a production
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`such as this does not cross the line. The opposing party will also have adequate opportunity to
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`address those documents in its opposition. Sonos has not demonstrated Google’s actions here
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`require this order to take action based on a marginally dilatory document production.
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`Sonos’s motion to strike as to this capture is denied.
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`4.
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`JULY 2010 YOUTUBE REMOTE API DOCUMENTATION.
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`We turn to exhibit 10 to Google’s motion for summary judgment. This three-page
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`document describes the API for the first release of the YouTube remote application, which used
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`version 1 of Google’s MDx protocol (Exh. 10, Dkt. No. 211-10). Sonos argues “Google’s
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`invalidity contentions for the ’615 patent do not include references to exhibit 10 or any other
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`API or API documentation” (Br. 10). Further, Sonos explains that exhibit 10 “is Dr.
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`Bhattacharjee’s sole support that the ‘prior art’ YouTube Remote System is allegedly similar to
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`the accused YouTube application” (ibid.).
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 7 of 10
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`Upon review of his declaration, Dr. Bhattacharjee refers to exhibit 10 to describe how the
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`YouTube Remote application would send a “setPlaylist” message to a MDx server that would in
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`turn send the message to, e.g., a television to resume playback, as well as how that functionality
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`purportedly qualifies as a “local playback queue” as recited by the ’615 patent (Bhattacharjee
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`Decl. ¶¶ 137, 180, Dkt. No. 211-1). The exhibit contains the same key information regarding
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`the “setPlaylist” message disclosed in Google contentions by item [7], documentation
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`describing the YouTube remote system’s MDx protocol (compare Exh. 10, with Contentions at
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`1, 24–25). Google’s use of a different document to support a theory it disclosed in its
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`contentions does not run afoul of our Patent Local Rules. Sonos has also not sufficiently
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`explained why a document describing the YouTube remote application’s API constitute a prior
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`art reference distinct from the YouTube remote application, generally. Further, as discussed
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`above, Google’s production of this document contemporaneously with its motion for summary
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`judgment does not change this conclusion.
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`Sonos’s motion to strike as to exhibit 10 is denied.
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`5.
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`“REPRODUCED” JULY 2011 SOURCE CODE.
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`Next up is source code for the YouTube Remote application dated July 12, 2011. As
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`Google explains, it produced this code in tandem with its updated invalidity contentions that it
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`served on December 7, 2021 (Opp. 19). In a supplemental interrogatory response dated
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`February 4, 2022, Sonos challenged the prior-art status of the YouTube remote system. In
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`Google’s words: “To address Sonos’s newly-raised objection, Google re-collected and
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`reproduced [on March 22] the YouTube Remote source code from July 12, 2011 in a manner
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`that preserved the last modified dates of each file” (ibid.).
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`Sonos, suspicious of Google’s production, notes that the declaration describing the
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`reproduction “does not say that the contents of the files from each of these versions are identical
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`or if they contain additional lines of code or changed lines” (Reply Br. 11). But neither does
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`Sonos identify a single change it discovered beyond the last-modified date. Ultimately, without
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`more, this order cannot justify the serious remedy of striking the material related to the July
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`2011 source code.
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 8 of 10
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`6.
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`NOVEMBER 2010 SOURCE CODE.
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`When Google “reproduced” its July 2011 source code in March 2022, it also produced for
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`the first time source code from November 11, 2010 for its YouTube Remote system. Google
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`explains that this November 2010 source code “show[ed] that the YT remote system was prior
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`art not only as of July 2011, but also much earlier” (Reply Br. 19). It claims the earlier source
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`code “just adds additional support that the functionality Google relies on also existed at least as
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`early as November 11, 2010 (id. at 19). Sonos correctly notes, however, that “Google offers no
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`explanation as to why this code was not produced with (or even referenced in) its contentions”
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`(Reply Br. 12).
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`Source code is rarely static. Whether a different iteration of the code also required
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`disclosure can depend on the degree in which the undisclosed version differs from the disclosed
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`version. Minor differences do not constitute a new prior art reference or theory and would
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`merely provide further evidentiary support, which does not justify striking the material.
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`Substantive differences that bear on a particular claim limitation, however, are different. See
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`Oracle, 2011 WL 4479305, at *3–4. Dr. Bhattacharjee’s declaration reveals negligible
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`differences between the November 2010 and July 2011 source code for some features of the
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`YouTube remote system, such as a revised name for a particular variable when the system pairs
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`the YouTube remote application with the backend server (compare Bhattacharjee Decl. ¶ 133,
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`with id. at ¶ 134). For other features, however, the differences are more significant. Take, for
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`example, how the system transfers playback of a playlist from the application on the mobile
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`device to the “LeanBack Screen,” i.e., the user’s television. For that feature, Dr.
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`Bhattacharjee’s description reveals stark differences between the November 2010 and July 2011
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`source code, both of which Google seeks to map onto claim limitations 13.5 and 13.6 of the
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`’615 patent. Upon review, the different iterations of the YouTube remote source code that
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`Google cites may both carry out similar features, but they do so in very different ways (see
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`Bhatarcharjee Decl. ¶ 139, 143). The July 2011 code has different variables and new functions.
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`This order finds that such differences required disclosure in Google’s contentions.
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`Google justifies its inclusion of the new version of the source code on the grounds that
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`Sonos moved the priority date of its patents from December 30, 2011 to July 15, 2011. That
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`could have opened the door for Google to amend its infringement contentions to include the
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`November 2010 source code. But Google made no such amendment. Such a change does not
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`allow Google to insert the November 2010 code at summary judgment as an alternative
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`argument for invalidity of the ’615 patent. This order accordingly strikes paragraphs 133 and
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`138–41 of Dr. Bhattacharjee’s expert report.
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`7.
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`PINTPOINT CITATIONS.
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`Finally, Sonos argues that Google’s invalidity contentions “merely cite to directories and
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`subdirectories of source code without identifying any specific files or pinpoint citations to
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`specific line numbers that would map those citations onto specific claim elements” (Br. 12).
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`Accordingly, Sonos requests this order strike paragraphs 133–34, 139–41, 143–45, 158, 170,
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`and 182 of Dr. Bhattacharjee’s declaration.
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`Sonos primarily relies in part on MasterObjects, Inc. v. Amazon.com, Inc., No. C 20-
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`08103 WHA, 2021 WL 5987101 (N.D. Cal. Dec. 17, 2021). That order, however, did not find
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`that pinpoint citations for source code were always required. Rather, it noted that some
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`decisions form our district have reached that conclusion but reasoned that, even if not per se
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`required, those citations were required in that action in light of counsel’s previous statements on
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`the matter. As previous decisions have made clear, pinpoint citations to source code may not
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`always be required. See Oracle, 2011 WL 4479305, at *3.
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`More fundamentally, the problem with Sonos’s motion lies in the fact that it had notice
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`that Google did not plan to amend its contentions on this point as of March 2 (Caridis Decl.
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`Exhs. C, D). Sonos then strategically chose not to initiate motion practice on this issue until
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`April 21, fifty days after Google’s March 2 letter. And that motion practice did not target
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`Google’s invalidity contentions but Google’s summary judgment motion. If Sonos felt pinpoint
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`citations were required in this matter, it “should have sought intervention from the Court,
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`instead of moving to strike [Google’s] expert report after the fact.” Largan, 2014 WL 6882275,
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`at *7. The motion to strike this material is denied.
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`Case 3:20-cv-06754-WHA Document 315 Filed 08/02/22 Page 10 of 10
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`CONCLUSION
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`For the foregoing reasons, the motion to strike is GRANTED IN PART and DENIED IN
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`PART. This order strikes paragraphs 133 and 138–41 of Dr. Bhattacharjee’s expert report in
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`their entirety. The rest of the motion is denied.
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`IT IS SO ORDERED.
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`Dated: August 2, 2022.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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