Case 3:20-cv-06754-WHA Document 390 Filed 10/31/22 Page 1 of 8
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`***PUBLIC REDACTED VERSION***
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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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`Case No. 20-cv-06754-WHA (DMR)
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`ORDER ON JOINT DISCOVERY
`LETTER
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`Re: Dkt. No. 327
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`Defendant.
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`The parties filed a joint discovery letter brief in which Plaintiff Google, LLC (“Google”)
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`moves to compel Defendant Sonos, Inc. (“Sonos”) to designate a witness in response to one of its
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`Rule 30(b)(6) deposition topics. [Docket No. 327 (Jt. Letter).] This matter is suitable for
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`determination without oral argument. Civ. L.R. 7-1(b). For the following reasons, the motion is
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`denied.
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`I.
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`BACKGROUND AND PROCEDURAL HISTORY
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`In this patent case, accused infringer Google seeks declaratory judgment of non-
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`infringement and invalidity of four patents owned by Sonos: United States Patent Nos. 9,967,615;
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`10,779,033; 10,469,966; and 10,848,885. [Docket No. 125 (Second Am. Compl., “SAC”) ¶ 1.]
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`The technology relates to wireless multi-room audio systems. The ‘615 patent is titled
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`“Networked Music Playback.” The ‘033 patent is titled “Systems and Methods for Networked
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`Music Playback.” The ‘966 and ‘885 patents are both titled “Zone Scene Management.” SAC
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`Exs. 7-10.1
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`The operative complaint also states claims for breach of contract and conversion. In
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`relevant part, Google alleges that in November 2013, Google and Sonos entered into a “Content
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`1 In a related case, No. 1-cv-07559 WHA, Sonos, Inc. v. Google LLC, Sonos alleges claims for
`infringement of four other patents against Google. [See Docket No. 211.]
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`Case 3:20-cv-06754-WHA Document 390 Filed 10/31/22 Page 2 of 8
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`Integration Agreement” (the “Agreement”) pursuant to which Google would “make resources
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`available to Sonos, ‘
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`.’” [Docket No. 123-3 (SAC) ¶ 21.] Under the Agreement, Google
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`alleges that it provided Sonos with “substantial assistance, including access to Google’s engineers
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`and knowledge of Google’s products and technology, including products and technology at issue
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`in this action.” Id.
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`Importantly, the Agreement contains a provision about the ownership of “Provider
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`Developments.” Google alleges that section 3.4 of the Agreement “provides that Google owns
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`‘
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`’ intellectual property rights ‘
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`’ to ‘
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`,’ and
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`that Sonos will not ‘
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`’ any such rights:
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`Id. at ¶ 22. The
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`Id. at ¶ 23. Google alleges that under Section 3.4, “the parties agreed that Google would own ‘
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`” by Google and Sonos. Id. at
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`¶ 22.
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`Case 3:20-cv-06754-WHA Document 390 Filed 10/31/22 Page 3 of 8
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`The functionality that Sonos accuses of infringing its ‘615 and ‘033 patents is “cloud
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`queue,” which Google contends “arises from or relates to the ‘
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`,’” including
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`work by Google to “create the ‘
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`’” Id. at ¶ 23. Google alleges that under the Agreement, the cloud queue technology
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`it developed was its sole and exclusive property and Sonos was not permitted to
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`. Id. at ¶ 30. According to Google, Sonos has
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`wrongfully attempted to claim the cloud queue technology as its own, and many of Sonos’s
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`infringement allegations against Google are directed at Google technologies that arise out of the
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`work Google did as part of its collaboration with Sonos. Id. at ¶¶ 31, 33.
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`In addition to its request for a declaration of non-infringement and invalidity of the four
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`patents-in-suit, Google brings a claim for breach of the Agreement based in part on Sonos’s
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`alleged attempt to claim ownership over the Provider Developments and/or the Integrated Service
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`Offering. Id. at ¶ 89. Google also brings a conversion claim based on the cloud queue idea. Id. at
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`¶ 95.
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`In August 2022, the Honorable William H. Alsup granted Google’s motion for summary
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`judgment of non-infringement and invalidity of claim 13 of the ‘615 patent. [Docket No. 316.]
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`The ‘615 patent relates to the act of transferring playback of music or other media content from
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`one device (e.g., a smart phone) to another (e.g., a smart speaker).2
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`Fact discovery closes on November 30, 2022. Dispositive motions are due in late January
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`2023 and trial is scheduled to begin on May 10, 2023.
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`II.
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`DISCOVERY DISPUTE
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`At issue is Google’s Rule 30(b)(6) Topic No. 6:
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`The agreements governing Sonos’s collaborations with Google,
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`2 In July 2022, Judge Alsup granted Sonos’s motion for summary judgment of infringement of
`claim one of the ‘885 patent and denied Google’s cross motion for summary judgment of non-
`infringement and invalidity. The ‘885 patent covers technology related to managing groups of
`smart speakers. [Docket No. 309.] On October 18, 2022, following the issuance of an Order to
`Show Cause after the July 2022 order on summary judgment, Judge Alsup granted summary
`judgment in favor of Sonos on the issue of validity of the ‘885 patent. [Docket No. 382.]
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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 390 Filed 10/31/22 Page 4 of 8
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`including but not limited to the Content Integration Agreement,
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`Sonos’s understanding of the scope of the “
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`Agreement, Sonos’s understanding of whether
`functionality
`developed or information exchanged as part of the parties’
`collaboration is covered by the Content Integration Agreement, and
`an Identification of persons most knowledgeable about this Topic.
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`Sonos interpreted the term “collaborations” to refer “to the collaboration between the parties to
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`develop an application that would allow Google’s music service to play directly to the Sonos
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`music system.” It made a number of objections, including that the topic “seeks information that is
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`protected by the attorney client privilege or work product doctrine,” and that it is “improper to the
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`extent it seeks legal opinions insofar as contract interpretation is a question of law.” Sonos refuses
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`to provide a witness on this topic. Jt. Letter Ex. 1.
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`Google explains the relevance and basis for this topic as follows: the parties dispute the
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`scope of the Content Integration Agreement. Specifically, the parties dispute “
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`” i.e., the Agreement
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`Agreement “
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`Letter 1 (emphases added).3
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`.” Google’s position is that the
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`.” Jt.
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`Sonos drafted the Agreement and its witnesses have characterized it as a “standard” Sonos
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`agreement. Google argues that because Sonos has taken a position on the scope of the Agreement,
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`it is entitled to discovery regarding the factual basis for Sonos’s position. Id. at 2. Google claims
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`that the scope of the Agreement “will be a key issue at trial,” arguing that the Agreement is
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`“fundamental” to Google’s breach of contract and conversion claims, as well as defenses of
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`unclean hands, equitable estoppel, waiver, implied license, exhaustion, and limitation on liability.
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`Id.
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`3 Google cites the parties’ previous filings in connection with the related case, 21-7559 WHA, in
`support of its description of the parties’ positions on scope. These filings were sealed by the
`original court, the Western District of Texas, and are not accessible on ECF.
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`Case 3:20-cv-06754-WHA Document 390 Filed 10/31/22 Page 5 of 8
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`As a final proposed compromise, Google offers to revise the topic as follows: “all facts
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`supporting any position Sonos intends to take at trial or in this case with respect to the
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`[Agreement] and the scope of what the Agreement covered or did not cover.” Id. at 3.
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`Sonos argues that the original topic “improperly asks for Sonos’s legal theories, contract
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`interpretations, and its trial strategy.” Jt. Letter 3. It notes that it has already agreed to produce a
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`witness to testify about “the fact[s] and circumstances regarding the negotiations and execution of
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`the Content Integration Agreement.” Sonos argues that Google should not be permitted to
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`discover (1) which facts Sonos contends support Sonos’s legal positions; (2) legal interpretations
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`of the scope of agreements or of terms used therein; or (3) Sonos’s trial strategy. Id. It also notes
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`that Google’s proposed “compromise” actually broadens the scope of the topic and is also
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`objectionable because it asks for “all facts supporting any position Sonos intends to take at trial”
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`about the Agreement. Id. at 4 n.3.
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`The court agrees with Sonos. The 30(b)(6) topic improperly requests deposition testimony
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`about Sonos’s legal contentions, theories, and interpretations. It seeks a witness to testify on
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`“Sonos’s understanding of the scope of the ‘
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`’ described in Section 3.4
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`of the Content Integration Agreement [and] Sonos’s understanding of whether functionality
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`developed or information exchanged as part of the parties’ collaboration is covered by the Content
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`Integration Agreement,” among other things. This dispute is similar to Lenz v. Universal Music
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`Corp., No. C 07-03783 JF PVT, 2010 WL 1610074, at *2–3 (N.D. Cal. Apr. 20, 2010), a
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`copyright case in which the plaintiff sought to depose a 30(b)(6) witness on the subject of “the
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`basis for any belief by Universal that Ms. Lenz’s video infringes the copyright in ‘Let’s Go
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`Crazy,’ including without limitation the basis for any belief by Universal that Ms. Lenz's video is
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`not a fair use of ‘Let’s Go Crazy.’” Id. at *2. The court held that the topic sought testimony
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`regarding the defendant’s legal conclusions and was improper: “Plaintiff is asking for testimony
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`that forms the basis of defendant’s ‘belief’ regarding infringement and fair use. The facts that
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`form those ‘beliefs’ are legal conclusions and an improper topic for a Rule 30(b)(6) deposition.”
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`Id. at *3 (citing 3M Co. v. Kanbar, No. C06-01225 JW HRL, 2007 WL 1794936, at *2 (N.D. Cal.
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`June 19, 2007) (finding that challenged topics “each inquire about support for the allegations that
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`Case 3:20-cv-06754-WHA Document 390 Filed 10/31/22 Page 6 of 8
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`Defendant’s product infringes [plaintiff’s] marks” and holding that “in these circumstances, topics
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`containing the terms ‘identical,’ ‘confusingly similar,’ and ‘blurring, dilution and tarnishment’ are,
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`in effect, seeking legal conclusions that should not form the basis for 30(b)(6) deposition
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`topics.”)).
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`Sonos notes that Google advanced a position similar to Sonos’s in a recent case in this
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`district. In In re Google RTB Consumer Priv. Litig., No. 21CV02155 YGR (VKD), 2022 WL
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`2068215, at *5–6 (N.D. Cal. June 8, 2022), a privacy case, plaintiffs moved to compel Google to
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`produce a corporate representative to testify about the following statements/promises to users: “we
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`do not sell your personal information to anyone”; “Google will never sell any personal
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`information to third parties”; “Advertisers do not pay us for personal information”; “We don't
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`share information that personally identifies you with advertisers”; “We also never use ... sensitive
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`information like [race], religion, or sexual orientation, to personalize ads to you”; and, “We don't
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`show you personalized ads based on sensitive categories, such as race, religion, sexual orientation,
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`or health.” Id. at *6. Plaintiffs also requested testimony on “[t]he purpose of policies, disclosures,
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`or language used for each of those six promises, including the basis for proposed changes or
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`modifications and why such changes or modifications were or were not implemented,” as well as
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`“Policies, disclosures or statements on which Google claims it obtained consent for the disclosure
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`and sale of Google Account Holder information through [real time bidding].” Id.
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`Google objected that the plaintiffs improperly sought testimony “about the legal
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`significance of the statements or about Google’s legal contentions,” citing Lenz and 3M in support.
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`Id. The court “agree[d] with Google that it is improper for plaintiffs to use [the challenged topics]
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`to obtain Google’s legal contentions or legal conclusions,” but held that it was permissible for the
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`plaintiffs to “obtain testimony about facts concerning the policies, disclosures, and statements at
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`issue,” such as when a statement was posted and how it is/was displayed to an account holder. Id.
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`The court further held that “a corporate deposition is not the appropriate vehicle for” discovery
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`about “Google’s contentions about which statements or disclosures support Google’s position that
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`disclosure or use of account holder personal information in the RTB process does not occur
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`without the account holders’ consent” in the first instance. Id.
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`Here, Google attempts to cast its topic as requesting only the “factual basis” for Sonos’s
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`position about the scope of the Agreement. See Jt. Letter 2-3 (“Google is seeking the factual basis
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`for Sonos’s position regarding what the Agreement does and does not cover.” (emphasis in
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`original)). But that is not how the topic is written—it seeks testimony on Sonos’s “understanding
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`of” the Agreement. Even if the topic could somehow be read as seeking the factual bases for
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`Sonos’s “understanding” of the meaning of certain provisions in the Agreement, it would still be
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`an improper attempt to discover legal conclusions and/or protected information. See, e.g., In re
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`Indep. Serv. Organizations Antitrust Litig., 168 F.R.D. 651, 654 (D. Kan. 1996) (holding that
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`30(b)(6) notice “requesting that [defendant] produce a corporate witness to testify about facts
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`supporting numerous paragraphs of [its] denials and affirmative defenses in its Answer and
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`Counterclaims” was “overbroad, inefficient, and unreasonable. It also implicates serious privilege
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`concerns, and potential problems with confidential information under our earlier protective order,”
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`and holding that “[e]ven under the present-day liberal discovery rules, [defendant] is not required
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`to have counsel ‘marshal all of its factual proof’ and prepare a witness to be able to testify on a
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`given defense or counterclaim.”).
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`Google offers one case in support of its position, JSR Micro, Inc. v. QBE Ins. Corp., No.
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`C-09-03044 PJH (EDL), 2010 WL 1338152, at *1–2 (N.D. Cal. Apr. 5, 2010). Jt. Letter 2. It is
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`distinguishable. In JSR Micro, an insurance coverage dispute, the plaintiff sought discovery into
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`how the defendant insurer interpreted the term “satisfactory proof of debt” and “what evidence
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`Defendant accepted in the past for that proof.” Id. at *1. To that end, the plaintiff sought
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`witnesses to testify on three topics: “Topic 7: Any marketing, selling, advertising or other
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`representations made by you with respect to trade credit insurance policies. Topic 10: Any and all
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`claims under trade credit insurance policies other than the policy. Topic 17: Any claims that you
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`did not pay on the basis that the insured did not satisfy all conditions of a policy.” Id. The
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`defendant objected that the topics were relevant to an issue (bad faith) that was outside the scope
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`of discovery limitations ordered by the judge presiding over the case. The discovery judge held
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`that “evidence of an insurer’s representations about or interpretations of a policy term is generally
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`discoverable as relevant to interpretation of the contract language, regardless of any question of
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`Case 3:20-cv-06754-WHA Document 390 Filed 10/31/22 Page 8 of 8
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`bad faith,” and that the plaintiff was “entitled to explore through discovery facts relevant to its
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`own non-frivolous theories regarding the meaning of contractual terms, even if Defendant
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`disagrees with Plaintiff’s theories on the merits.” Id. at *1-2.
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`Google argues that JSR Micro stands for the proposition that it is appropriate to allow
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`discovery “regarding a party’s understanding of” a “critical contractual provision.” Jt. Letter 2.
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`As an initial matter, the defendant in JSR Micro did not object to the topics as improper because
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`they sought testimony about its legal contentions or legal conclusions. Moreover, none of the
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`topics sought the identification of facts that the defendant claimed supported its interpretation of
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`the agreement at issue; rather, the topics covered historical facts about the insurer’s actions from
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`which the plaintiff could make arguments about contract interpretation. Here, Google is asking
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`Sonos to provide corporate testimony on contract interpretation and Sonos’s legal conclusions
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`about which facts are relevant to that issue.
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`In sum, Google’s Topic No. 6 improperly asks for Sonos’s legal theories and conclusions
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`and contract interpretation. Its proposed compromise does not fix this issue because it asks Sonos
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`to disclose its trial strategy. Google’s motion to compel is denied.
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`IT IS SO ORDERED.
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`Dated: October 31, 2022
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`______________________________________
`Donna M. Ryu
`United States Magistrate Judge
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