Case 3:20-cv-06754-WHA Document 382 Filed 10/18/22 Page 1 of 3
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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 ENTERING SUMMARY
`JUDGMENT IN FAVOR OF SONOS
`AS TO VALIDITY OF THE '885
`PATENT
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`A July 2022 order granted Sonos’s motion for summary judgment of infringement of
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`claim 1 of United States Patent No. 10,848,885 (Dkt. No. 309). That order also rejected
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`Google’s arguments — made in both its opposition brief and its own patent showdown motion
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`papers — that the claim was invalid. Specifically, that order rejected Google’s arguments that
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`claim 1 of the ’885 patent covered unpatentable subject-matter under 35 U.S.C. § 101 and that
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`the claim lacked written description support under 35 U.S.C. § 112. In light of that order,
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`Google was ordered to show cause as to why summary judgment should not be entered in favor
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`of Sonos on the issue of validity (Dkt. No. 339).
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`Both parties have now responded (Dkt. Nos. 349, 351). In its response, Google
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`abandoned the invalidity arguments it had made in its summary judgment briefing and instead
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`shifted its focus to a bundle of new theories. In short, Google now asserts for the first time that
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`the claim was obvious in light of Sonos prior art and online forum posts made by third-party
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`users on Sonos’s website in 2005. Google additionally now asserts that there are material
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`Case 3:20-cv-06754-WHA Document 382 Filed 10/18/22 Page 2 of 3
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`issues of disputed fact as to whether third-party prior art speaker systems render the ’885
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`patent invalid.
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`The order to show cause, however, was not intended to provide Google a second bite at
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`the apple. It would not have been allowed to spring new invalidity theories at trial and cannot
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`do so now. Google objects that it should be allowed to pivot because its original “selection of
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`arguments” relied on the construction for the term “zone scene” made by Judge Alan Albright
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`in the Western District of Texas before this action was transferred here. Google therefore
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`asserts that it should be allowed to recalibrate its arguments in conformance with the different
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`construction made in the order on summary judgment (Br. 1–3).
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`This argument does not hold water. First, Judge Albright’s oral claim construction
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`rulings are not and were never the law of the case. See, e.g., Vazquez v. Jan-Pro Franchising
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`Int’l, Inc., 923 F.3d 575, 586 (9th Cir. 2019), reh’g granted, opinion withdrawn on other
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`grounds, 930 F.3d 1107 (9th Cir. 2019) (“Following a § 1404(a) transfer, the receiving court
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`should treat pre-transfer rulings by the transferring court in much the same way as one district
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`judge treats the ruling of a colleague.”). To the extent that Google relied on Judge Albright’s
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`rulings, that reliance was misplaced.
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`Second, the order on summary judgment adopted Judge Albright’s construction verbatim
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`(see Dkt. No. 309 at 7). True, the order additionally found that the requirement that “zone
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`scenes” must be formed “according to a common theme” could be satisfied by allowing users
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`to name and save speaker groups. Judge Albright, however, expressly stated that his claim
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`construction ruling would not preclude Sonos from arguing for that conclusion. See Google v.
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`Sonos, No. C 6:20-00881-ADA (W.D. Tex. Aug. 10, 2021), Dkt. No. 106 at 37.
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`Third, perhaps in recognition of the foregoing points, Google directly addressed in its
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`summary judgment briefing the possibility that the “common theme” requirement can be
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`satisfied by naming and saving speaker groups. See Dkt. No. 249 at 5–7. Google also
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`addressed the issue at oral argument. This shows that Google was on notice that it had to put
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`forth its best case.
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`Case 3:20-cv-06754-WHA Document 382 Filed 10/18/22 Page 3 of 3
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`In sum, Google’s own filings repeatedly show that it was aware of the possibility that the
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`“common theme” requirement could be satisfied by naming and saving speaker groups.
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`Despite that awareness, Google chose to withhold certain theories addressing the issue. By
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`way of explanation, Google laments that it “elected to focus its showdown papers on non-
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`infringement and not on prior art invalidity” because of page limits (Br. 1). Google, however,
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`made the strategic choice to raise invalidity in its summary judgment papers, which then forced
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`Sonos to address it for the first time in a fifteen-page reply brief. Google cannot readjust its
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`sails now that it knows which way the judicial winds are blowing. Those theories are therefore
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`waived. See Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1366 (Fed. Cir.
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`2003).
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`Google’s response does not otherwise alter the conclusions made in the order on
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`summary judgment. Accordingly, summary judgment is GRANTED in favor of Sonos on the
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`issue of validity of the ’885 patent. See FRCP 56(f); Gonzales v. CarMax Auto Superstores,
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`LLC, 840 F.3d 644, 654–55 (9th Cir. 2016).
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`IT IS SO ORDERED.
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`Dated: October 18, 2022.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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