Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 1 of 6
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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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`Defendant.
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`No. C 20-06754 WHA
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`ORDER STAYING CASE
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`INTRODUCTION
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`In this action for declaratory judgment of patent noninfringement, the patent holder moves
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`to dismiss this case in favor of its own action, filed elsewhere a few hours later. For the
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`following reasons, this case is STAYED.
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`STATEMENT
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`This complaint for declaratory relief opens yet another theater in the ongoing global patent
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`war between accused infringer Google LLC and patent owner Sonos, Inc. The specifics of the
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`disputed technology, however, do not come into play on this order.
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`With our parties already embroiled in the ITC, this district, and in Canada, France,
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`Germany, and the Netherlands, at 12:52 p.m. on September 28, patent owner’s counsel sent
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`Google an email:
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`Attached please find a courtesy copy of the complaint that we will
`file Tuesday, September 29th in the United States District Court.
`In this lawsuit, Sonos will focus on Google’s infringement of U.S.
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`Northern District of California
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`United States District Court
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`Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 2 of 6
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`Patents 9,967,615; 10,779,033; 9,344,206; 10,469,966; and
`9,219,460 . . . .
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`Enclosed was an eighty-seven page complaint delineating the allegations of infringement to be
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`filed, according to the caption, in the United States District Court for the Western District of
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`Texas, Waco Division. In response, at 11:41 p.m. that evening, Google filed its own thirteen-
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`page complaint for declaratory relief of noninfringement of the same five patents here in the
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`Northern District of California (Dkt. No. 1).
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`As promised, patent owner filed its complaint a few hours later on September 29 in the
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`Western District of Texas, Waco Division. Sonos, Inc. v. Google LLC, No. C 20-00881 ADA
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`(W.D. Tex.) (Judge Alan D. Albright). Patent owner now moves to dismiss this declaratory
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`action in favor of the Texas action. This order follows full briefing and oral argument (held
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`telephonically due to COVID-19).
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`ANALYSIS
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`Our case presents two matters of discretion. On the one hand, the Declaratory Judgment
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`Act provides courts a “unique and substantial discretion in deciding whether to declare the
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`rights of litigants.” Wilton v. Seven Falls Co., 515 U.S. 277, 286–88 (1995). “[W]ell-founded
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`reasons for declining to entertain a declaratory judgment action” will be found within “the
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`purposes of the Declaratory Judgment Act and the principles of sound judicial administration.”
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`See Comm’cns Test Design, Inc. v. Contec, LLC, 952 F.3d 1356, 1361 (Fed. Cir. 2020). On the
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`other hand, judicial comity counsels deference (via stay, transfer, or dismissal) to the first-filed
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`of two actions presenting identical parties and issues to avoid conflicting decisions and promote
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`judicial efficiency, unless a party’s bad faith or improper purpose, the convenience of the
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`forum, and the “considerations of judicial and litigant economy, and the just and effective
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`disposition of disputes” counsel otherwise. Where these two instances join, “district courts
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`enjoy a ‘double dose’ of discretion: discretion to decline to exercise jurisdiction over a
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`declaratory judgment action and discretion when considering and applying the first-to-file rule
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`and its equitable exceptions.” Id. at 1362–63; Elecs. For Imaging, Inc. v. Coyle, 394 F.3d 1341,
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`1347 (Fed. Cir. 2005); Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 628 (9th Cir. 1991).
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`Northern District of California
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`Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 3 of 6
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`In the acute circumstance apparent here, Google’s choice of forum carries no weight, nor
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`does the fact that it managed to file first, for the following reasons.
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`First, the manifest purpose of Google’s suit was to beat the clock and defeat the patent
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`owner’s choice of venue. On September 28 just after noon, patent owner shared “a courtesy
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`copy of the complaint that we will file Tuesday, September 29th in the United States District
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`Court.” Leaving no good deed unpunished, Google turned around and filed its own complaint
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`at the twelfth hour, purely to beat patent owner to a courthouse — not even by a full day, but by
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`a matter of hours.
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`Second, Google’s complaint utterly fails to meet the standard for obtaining declaratory
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`relief because it does not explain how its accused products avoid infringement of the asserted
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`patents. As the undersigned has held consistently since the abrogation of Form 18, a
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`declaratory relief complaint must explain “how each accused product or service specifically
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`does not meet at least one claim limitation, such that it does not infringe the asserted patent.”
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`Comcast Cable Comm’cns, LLC v. OpenTV, Inc., 319 F.R.D. 269, 273 (N.D. Cal. 2017); see
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`also, Bot M8 v. Sony, No. C 19-07027 WHA, 2020 WL 418938, at *1 (N.D. Cal. Jan. 27, 2020);
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`see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544,
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`555 (2007). True, the Federal Circuit has construed this burden as minimal in a case of “simple
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`technology,” a term surely inapplicable here, yet even there the adequate complaint contained
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`some factual matter (e.g., photographs of the accused product) to be compared to the claim
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`language. See Disc Disease Solutions v. VGH Solutions, Inc., 888 F.3d 1256, 1260 (Fed. Cir.
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`2018).
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`Google’s complaint stumbles under this minimal burden. It offers no allegations of fact in
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`support of its five claims of noninfringement. This order repeats, to emphasize that this is not
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`an exaggeration, that Google’s complaint offers no allegation of fact in support of the claims of
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`noninfringement. Five times, the complaint alleges “Google does not directly or indirectly
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`infringe the [relevant] patent, either literally or under the doctrine of equivalents, at least
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`because the Google Accused Products do not comprise [a word-for-word recitation of the claim
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`language].”
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`Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 4 of 6
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`In stark contrast, patent owner’s eighty-seven page Texas complaint details how the
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`accused products infringe each element of each asserted claim in nearly sixty pages of claim
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`charts. It is again manifest that Google and its attorneys threw this ramshackle complaint
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`together in a matter of hours just to beat the clock and try to “file first” in its hometown.
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`Google does not seriously contest this. Rather, it contends that patent owner already had
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`notice of the issues in this case, as patent owner started the dispute. That’s not good enough, for
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`Google was required to affirmatively explain why its accused products omitted one or more of
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`each claim limitation in suit. Google’s argument, in essence, concedes that its declaratory
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`complaint means nothing without reference to patent owner’s Texas complaint, which again
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`counsels deference to that proceeding.
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`*
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`*
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`*
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`Google’s choice of forum is entitled to no weight. Rather, the proper course is to stay this
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`case and defer to Judge Albright’s ruling on Google’s just-filed motion to transfer under Section
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`1404 and its factors, such as any forum select clause, the convenience of the parties, the
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`comparative time to trial, the interests of justice, and whether any of the many hundreds of
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`engineers Google apparently employs in the Western District will be called as witnesses. If the
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`judge grants such a motion, the undersigned will take the case. If he denies such motion then
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`our case will remain stayed indefinitely in favor of the Texas action.
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`It is, of course, certainly possible that Sonos is just as guilty of forum shopping here as
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`Google. At the hearing, counsel for Sonos maintained that they filed in the Western District of
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`Texas because that district has continued to hold patent trials despite the pandemic, whereas our
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`own district has largely ceased holding jury trials. Indeed, counsel represented, Judge Albright
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`had just finished another patent trial in recent weeks. At least at first glance, the Court saw
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`some logic in this response, although by now there may be dozens of patent cases standing in
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`line to Judge Albright’s courtroom.
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`Shortly after the hearing, however, the undersigned learned otherwise by way of a writ of
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`mandamus from the Court of Appeals for the Federal Circuit directing Judge Albright to
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`transfer a case to this district which, coincidentally, has come before the undersigned. The
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`Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 5 of 6
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`court of appeals, we have now learned, has rejected Sonos’s argument that a “court’s suggestion
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`that it could more quickly resolve [a] case based on its scheduling order” be given dispositive
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`weight:
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`The [court congestion] factor concerns whether there is an
`appreciable difference in docket congestion between the two
`forums. Nothing about the court’s general ability to set a schedule
`directly speaks to that issue.
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`In re Adobe Inc., 823 Fed. App’x 929, 932 (Fed. Cir. 2020) (citations omitted). Nevertheless,
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`the proper course remains to stay the present action until Judge Albright can rule on Google’s
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`motion to transfer. The judge will no doubt account for the Federal Circuit’s recent direction.
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`In the meantime, Google shall amend its complaint. To be clear, this amendment does not
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`cure Google’s failures detailed above or alter the analysis of which suit ought to proceed. That
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`would reward Google’s litigation gimmick, to anchor venue with a bare bones complaint and
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`then fix it up by amendment. Cf. Foman v. Davis, 371 U.S. 178, 182 (1962). Rather, this
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`amendment will ensure that we are prepared to proceed at pace in the event that Judge Albright
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`decides this case should go forward.
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`CONCLUSION
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`This action and the accompanying international campaign are emblematic of the worst
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`aspects of patent litigation. In just nine months, these parties have managed to escalate their
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`dispute seemingly without bound, filing suits in the ITC, twice in this district, in the Central
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`District of California, in the Western District of Texas, in Canada, France, Germany, and the
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`Netherlands, all about home speaker systems. The resources invested into this dispute already
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`are doubtless enormous. By the end, our parties’ legal bills will likely have been able to build
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`dozens of schools, pay all the teachers, and provide hot lunches to the children.
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`This case is STAYED except that Google SHALL move for leave to file a first amended
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`complaint that meets the standard articulated above by DECEMBER 11 AT NOON. That is,
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`Google shall specify, for every accused product for which it seeks a declaration of
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`noninfringement, how the product fails to satisfy at least one limitation of every challenged
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`claim. Meanwhile, the parties SHALL keep the Court apprised of material updates in the Texas
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`Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 6 of 6
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`proceedings and promptly provide Judge Albright a copy of this order. A further status
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`conference is SET for MARCH 25, 2021 AT 11:00 A.M.
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`IT IS SO ORDERED.
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`Dated: November 20, 2020.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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