Case 3:20-cv-06754-WHA Document 432 Filed 12/21/22 Page 1 of 4
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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 DENYING LEAVE TO FILE
`SUPPLEMENTAL CLAIM
`CONSTRUCTION BRIEFING
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`Google has filed a motion for leave to file supplemental claim construction briefing (Dkt.
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`No. 375). The basis for its motion is its recent discovery of statements made by Sonos’s
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`Australian counsel during the foreign prosecution of an “Australian counterpart” to U.S. Patent
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`No. 10,779,033. Sonos opposes, arguing that the statements it made in the Australian
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`prosecution do not justify revisiting settled claim construction positions (Dkt. No. 389). This
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`motion is suitable for resolution on the papers. Civ. L.R. 7-6.
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`The ’033 patent is directed to transferring playback of a “remote playback queue” from a
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`“computing device” to a “playback device.” In plain English, the patent relates to, for example,
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`transferring audio playback of a music playlist from a smart phone to a smart speaker. While
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`this case was in the Western District of Texas, Google sought to construe the term “remote
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`playback queue” as a “remote playback queue provided by a third party application.” When
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`Case 3:20-cv-06754-WHA Document 432 Filed 12/21/22 Page 2 of 4
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`this case was transferred here, however, Google dropped the term from its disclosures and
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`abandoned its claim construction position.
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`Meanwhile, in September 2020, Sonos began prosecuting a similar patent application in
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`Australia. The Australian application shares the same title and virtually the same specification
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`and figures as the ’033 patent. During prosecution, the Australian patent office found that the
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`term “remote playback queue” was not sufficiently disclosed. In response, Sonos’s counsel
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`made certain statements to the Australian patent office related to the scope of the term. Most
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`pertinently, Sonos counsel stated in June 2022 that the “‘remote playback queue’ referred to in
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`claim 1” of the Australian counterpart “corresponds to the queue that the user is
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`editing/managing in the third party application.” Sonos counsel then went on to state that the
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`“meaning of remote playback queue would clearly be the playback queue that the user is
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`managing in the third party application” (Exhs. 10–11).
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`These statements are problematic for Sonos because Google asserts that its accused
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`“remote playback queue” is not part of a third-party application. Thus, Google argues that these
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`statements qualify as “crucial admissions” and “new evidence” that justify revisiting claim
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`construction positions (Br. 11–12). Sonos responds, in part, that the bulk of any evidence that
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`would justify Google’s proposed construction was available to Google when the parties
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`exchanged claim construction briefing in March 2022. Sonos asserts that Google is using the
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`Australian statements as a ploy to reshuffle its claim construction strategy, and that our Patent
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`Local Rules were designed to eliminate such “gamesmanship” (Opp. 15–16).
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`Upon review, this order sides with Sonos. First, the Court of Appeals for the Federal
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`Circuit has “caution[ed] against indiscriminate reliance on the prosecution of corresponding
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`foreign applications in the claim construction analysis” because “the theories and laws of
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`patentability vary from country to country, as do examination practices.” AIA Eng’g Ltd. v.
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`Magotteaux Int’l S/A, 657 F.3d 1264, 1279 (Fed. Cir. 2011) (citation omitted). Here, Sonos has
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`cited material suggesting that correspondence between an applicant and the Australian patent
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`office may not be admissible for the purposes of claim construction under Australian law (Opp.
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`11). This in turn suggests that the statements may not have been “made in an official
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`Case 3:20-cv-06754-WHA Document 432 Filed 12/21/22 Page 3 of 4
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`proceeding in which the patentee had every incentive to exercise care in characterizing the
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`scope of its invention.” Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed.
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`Cir. 2004). This order therefore proceeds cautiously.
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`Second, although the two patents are related and share a familial relationship, their claims
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`are not identical. In particular, claim 1 of the Australian application — the claim referred to in
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`the statements above — is not identical to claim 1 of the ’033 patent. Claim 1 of the ’033 patent
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`recites “a remote playback queue provided by a cloud-based computing system associated with
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`a cloud-based media service,” whereas claim 1 of the Australian application recites “a remote
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`playback queue provided by a computing system that is communicatively coupled to the zone
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`player via at least a cloud-based network . . . .” This casts doubt on the relevance of the
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`statements to the ’033 patent. See, e.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1313 (Fed.
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`Cir. 2014), overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339
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`(Fed. Cir. 2015) (finding statement made during foreign prosecution persuasive in part because
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`the foreign application “contained a claim identical to” the claim at issue).
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`Third, when read in context, this order agrees with Sonos that the statements do not
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`qualify as the sort of “blatant admission” that warrants heightened scrutiny. Cf. Gillette Co. v.
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`Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (finding “blatant admission by
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`this same defendant before the [European Patent Office] clearly support[ed]” its claim
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`construction holding). The statements can be fairly read as a narrow argument proffering a
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`counterexample against the Australian patent office’s specific concerns over whether meaning
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`of the term “remote” could accommodate a “playback queue” located in a certain “geographic
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`location.” Put differently, Google’s assertion that the statements advocate for a universal and
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`limiting construction of “remote playback queue” is not convincing.
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`At bottom, this order finds that the statements carry too little weight to grant Google’s
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`request. Google wants to revise its claim construction position based on statements made by
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`foreign counsel in a foreign proceeding addressing a limited issue over a different claim. This
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`does not persuade. If Google did not consider the intrinsic evidence strong enough to weigh in
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`Northern District of California
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`Case 3:20-cv-06754-WHA Document 432 Filed 12/21/22 Page 4 of 4
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`its favor to advocate for its proposed construction earlier, the extrinsic statements here would
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`not have been afforded enough weight to move the needle. Google’s motion is DENIED.
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`IT IS SO ORDERED.
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`Dated: December 21, 2022.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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