Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 1 of 19
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SONOS, INC.,
`
`
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`
`No. C 20-06754 WHA
`
`
`
`ORDER RE MOTIONS TO STRIKE
`PORTIONS OF EXPERT REPORTS
`
`
`
`INTRODUCTION
`
`In this patent infringement action, both sides move to strike portions of each other’s
`
`expert reports. For the following reasons, patent owner’s motion is GRANTED IN PART and
`
`DENIED IN PART, and alleged infringer’s motion is DENIED.
`
`STATEMENT
`
`Sonos, Inc. accuses Google LLC of infringing U.S. Patent Nos. 10,779,033; 10,848,885;
`
`and 10,469,966. These patents generally concern multi-room “smart” speaker technology.
`
`Specifically, the ’033 patent covers technology related to transferring playback between
`
`devices, i.e., “casting,” whereas the ’885 and ’966 patents cover technology related to
`
`managing groups of smart speakers.
`
`In the lead-up to trial, both parties have filed motions to strike portions of each other’s
`
`expert reports (Dkt. Nos. 464, 469), as well as new motions for summary judgment (Dkt. Nos.
`
`478, 483). Sonos also filed a renewed motion to realign the parties (Dkt. No. 477), which the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 2 of 19
`
`
`
`undersigned granted at the hearing after Google withdrew its opposition (Dkt. No. 557). This
`
`order considers only the motions to strike.
`
`1.
`
`SONOS’S MOTION TO STRIKE.
`
`According to Sonos, Google improperly introduced new invalidity theories, non-
`
`infringement theories, and non-infringing alternatives in its expert reports.
`
`By way of background, Sonos explains that Google served invalidity contentions
`
`pursuant to Patent Local Rule 3-3 on December 6, 2021, which it urged Google to amend to no
`
`avail in March 2022 (Sonos Br. 3; Moss Exh. G). Separately, Sonos served interrogatories
`
`asking Google to describe its non-infringing alternatives and non-infringement positions on
`
`August 7, 2021 (Moss Exh. H at 16, 19–20). In the last week of fact discovery, Google served
`
`supplemental responses to these interrogatories, describing its non-infringing alternatives and
`
`non-infringement positions on November 21, 2022, and November 29, 2022, respectively
`
`(Moss Exhs. I, J). Then, on the last day of fact discovery, November 30, 2022, Google served
`
`the opening expert reports of Dr. Samrat Bhattacharjee and Dr. Dan Schonfeld (Moss Exhs. A,
`
`D). Google served the experts’ rebuttal and reply reports on January 13, 2023, and January 23,
`
`2023, respectively (Moss Exhs. B, C, E, F). Dr. Bhattacharjee’s reports address invalidity and
`
`non-infringement of the ’033 patent, whereas Dr. Schonfeld’s reports address invalidity and
`
`non-infringement of the ’885 and ’966 patents.
`
`Sonos argues that “despite [its] discovery obligations and procedural rules designed to
`
`promote disclosure and efficiency, Google waited until serving its expert reports to disclose a
`
`broad array of new invalidity and non-infringement theories,” thereby “hid[ing] the ball until
`
`fact discovery had closed” (Sonos Br. 2). Google purportedly failed to amend its invalidity
`
`contentions, to disclose its new positions in its interrogatory responses, and to supplement its
`
`disclosures as required under Federal Rule of Civil Procedure 26(e)(1). For that reason, Sonos
`
`asserts that Google’s new theories are untimely and improper, and that they should be struck
`
`from Dr. Bhattacharjee and Dr. Schonfeld’s reports.
`
`
`
`
`
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 3 of 19
`
`
`
`2.
`
`
`GOOGLE’S MOTION TO STRIKE.
`
`Meanwhile, according to Google, it was Sonos that improperly introduced new validity
`
`and infringement theories in its expert reports.
`
`Sonos served infringement contentions pursuant to Patent Local Rule 3-1 on October 21,
`
`2021 (Google Br. 4). Google emphasizes that Sonos was granted leave to amend these
`
`contentions several times, most recently on January 12, 2023 (Dkt. No. 447). (In some
`
`instances, Google opposed amendment, whereas in others, including the most recent instance,
`
`Google did not.) Sonos served the opening expert report of Dr. Douglas Schmidt on
`
`infringement of the ’033 patent on November 30, 2022 (Kaplan Exh. 2). It served his rebuttal
`
`report on validity and his reply report on infringement on January 13, 2023, and January 23,
`
`2023, respectively (Kaplan Exhs. 3, 5).
`
`Google argues that Sonos presented new validity and infringement theories in Dr.
`
`Schmidt’s rebuttal and reply reports that are based on claim constructions first disclosed in his
`
`rebuttal report and that are different than those provided by the Court. Google further argues
`
`that Sonos presented new infringement theories in all of Dr. Schmidt’s reports that were not
`
`disclosed in Sonos’s infringement contentions, and that Sonos presented new infringement
`
`theories in Dr. Schmidt’s reply report that were not disclosed in his opening report (Google
`
`Br. 5). Like Sonos, Google asserts that these new theories are therefore untimely and
`
`improper, and that they should be struck from Dr. Schmidt’s reports.
`
`The motions will be taken up in turn. This order follows full briefing and oral argument.
`
`ANALYSIS
`
`The patent local rules require parties to disclose infringement and invalidity contentions
`
`early. See Patent L.R. 3-1, 3-3. As such, they may not use expert reports “to introduce new
`
`infringement theories, new infringing instrumentalities, new invalidity theories, or new prior
`
`art references not disclosed in the parties’ infringement contentions or invalidity contentions.”
`
`See ASUS Comput. Int’l v. Round Rock Rsch., LLC, 2014 WL 1463609, at *1 (N.D. Cal. Apr.
`
`11, 2014) (Judge Nathaniel M. Cousins). But the rules permit amendment of contentions as
`
`new and previously unavailable information comes to light in discovery. See Patent L.R. 3-6;
`
`3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 4 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`O2 Micro Int’l Ltd. v. Monolithic Pwr. Sys., Inc., 467 F.3d 1355, 1365–66 (Fed. Cir. 2006).
`
`And, they do “not require identification of every evidentiary item of proof.” Oracle Am., Inc.
`
`v. Google Inc., 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26, 2011) (emphases omitted).
`
`Meanwhile, the Federal Rules of Civil Procedure require parties to supplement interrogatory
`
`responses on pain of not being able to use new information moving forward unless the failure
`
`to supplement is substantially justified or harmless. See Fed. R. Civ. P 26(e)(1), 37(c)(1).
`
`“The threshold question in deciding whether to strike an expert report” or, in this case,
`
`select portions of an expert report, is “whether the expert has permissibly specified the
`
`application of a disclosed theory or impermissibly substituted a new theory altogether.”
`
`Digital Reg of Tex., LLC v. Adobe Sys. Inc., 2014 WL 1653131, at *5 (N.D. Cal. Apr. 24,
`
`2014) (Judge Kandis A. Westmore). When the line between permissible application of a
`
`disclosed theory and impermissible substitution of a new theory blurs, the district court
`
`“revert[s] to a simple question: will striking the report result in not just a trial, but an overall
`
`litigation, that is more fair, or less?” Apple Inc. v. Samsung Elecs. Co., 2012 WL 2499929,
`
`at *1 (N.D. Cal. June 27, 2012) (Judge Paul S. Grewal).
`
`This order begins with Sonos’s motion to strike and associated arguments.
`
`SONOS’S MOTION: NEW INVALIDITY THEORIES.
`
`1.
`
`Starting with its first batch of arguments, Sonos avers that Google improperly introduced
`
`previously undisclosed invalidity theories in both Dr. Bhattacharjee and Dr. Schonfeld’s expert
`
`reports. Sonos seeks to strike material related to: (A) the Tungsten/NexusQ system’s “Magic
`
`Playlist” feature; (B) the YouTube Remote system’s provision of “automatic playback”; and
`
`(C) certain Bose products.
`
`A.
`
`TUNGSTEN/NEXUSQ SYSTEM’S “MAGIC PLAYLIST.”
`
`First, according to Sonos, Google improperly asserted for the first time in Dr.
`
`Bhattacharjee’s opening report that the “Magic Playlist” feature of the Tungsten/NexusQ
`
`system anticipated claim 1 of the ’033 patent (Sonos Br. 6–8). Dr. Bhattacharjee’s opening
`
`report states that “[i]n addition to allowing users to play user-created playlists, the prior art
`
`Tungsten/NexusQ was also able to playback playlists that were generated and stored in the
`
`4
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 5 of 19
`
`
`
`cloud” (Moss Exh. A ¶ 218). This “allowed users to request that the cloud servers generate
`
`and provide a playlist of songs that were related to, for instance, specific tracks or albums,
`
`which was called a ‘Magic Playlist’” (Moss Exh. A ¶ 220). As such, “[t]he Magic Playlist
`
`[was] a ‘remote playback queue’” per limitation 1.4 of the ’033 patent, which requires a
`
`“computing device [] configured for playback of a remote playback queue provided by a cloud-
`
`based computing system associated with a cloud-based media service” (Moss Exh. A ¶ 499;
`
`’033 patent 17:39–42). Sonos decries that the Magic Playlist feature appeared nowhere in
`
`Google’s invalidity contentions, which only disclosed the Tungsten/NexusQ system as prior art
`
`(Sonos Br. 6).
`
`But there is no new theory of invalidity here. Admittedly, Google should have been
`
`more forthcoming when it stated in its invalidity contentions that “the Tungsten/NexusQ
`
`system anticipate[d] the asserted claims of the ’033 patent under at least the interpretation that
`
`[Sonos] appears to rely on for its infringement theories” (Google Opp. 5) (internal quotation
`
`marks omitted). But Google provided additional information in its invalidity contentions
`
`sufficient to disclose its theory of invalidity. Note Google’s invalidity claim chart described
`
`how the Tungsten/NexusQ system enabled users to “pull the music directly from the music
`
`library in the cloud,” with a screenshot showing one user selecting a playlist to make
`
`“[a]vailable offline”:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Item [4] from Invalidity Claim Chart for ’033 Patent.
`
`(Moss Exh. K at 9–12).
`
`5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 6 of 19
`
`
`
`Sonos takes issue with the fact that Google did not expressly disclose a “playlist” when it
`
`stated that the Tungsten/NexusQ system allowed users to pull music directly from the cloud;
`
`after all, “pulling a single media file from a music library in the cloud would not require a
`
`‘playlist’ at all, much less one ‘generated’ by a cloud server” (Sonos Reply Br. 2–3) (emphasis
`
`in original). But playlists are clearly pictured in the screenshot above. That they could be
`
`made “available offline” reflects that they were stored in the cloud. And, that the text directly
`
`above the screenshot referred to “[v]arious forms of streaming media . . . be[ing] requested,”
`
`such as “live radio program[s]” from services “includ[ing] YouTube and Pandora,” adequately
`
`put Sonos on notice that these playlists could be generated by a cloud server (Moss Exh. K
`
`at 11–12). Taken together, that was sufficient disclose Google’s theory of invalidity. This
`
`order declines to strike material related to the Magic Playlist feature.
`
`B.
`
`YOUTUBE REMOTE SYSTEM’S “AUTOMATIC PLAYBACK.”
`
`Second, according to Sonos, Google improperly asserted for the first time in Dr.
`
`Bhattacharjee’s reply report that the YouTube Remote system anticipated claim 1 of the ’033
`
`patent based on its provision of “automatic playback” of lists of videos (Sonos Br. 7–8). Dr.
`
`Bhattacharjee’s reply report explains that “[a]lthough the ‘+’ icon c[ould] be used to add a
`
`recommended video to the user’s queue, the list of recommended videos c[ould] also be played
`
`back without adding them to the user’s queue” (Moss Exh. C ¶ 79). Dr. Bhattacharjee
`
`annotates a screenshot from Google’s invalidity claim chart that “shows the YouTube Remote
`
`prior art playing back a list of videos provided by the YouTube cloud servers in the ‘Search’
`
`workspace — in other words, without using the ‘+’ icon to add the videos to the user’s queue”
`
`(ibid.). Dr. Bhattacharjee suggests that the YouTube Remote system thereby allowed for
`
`playback of a remote playback queue, not just playback of a local playback queue when a user
`
`manually added videos using the “+” icon. The annotated screenshot from Dr. Bhattacharjee’s
`
`report is reproduced below:
`
`
`
`
`
`
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 7 of 19
`
`
`
`Annotated Screenshot from Reply Report
`of Dr. Bhattacharjee.
`
`
`
`(ibid.).
`
`This order agrees with Google that its invalidity contentions sufficiently disclosed the
`
`underlying theory. Only Dr. Schmidt’s rebuttal report (that Dr. Bhattacharjee’s reply report
`
`was directed to) limited Google’s theory to playback of a queue of videos a user expressly
`
`added to the “Queue” workspace, elsewhere referred to as the “Queue” tab (see Google Opp. 5
`
`n.3). Google’s invalidity claim chart provided screenshots of playback of queues of videos
`
`from the “Search” and “Recommended” tabs in its discussion of limitation 1.4, like the one
`
`above unannotated (Moss Exh. L at 7, 11). Further, any doubt about the disclosure (and
`
`feasibility) of “automatic playback” from such tabs appears to be foreclosed upon review of
`
`item [4] from that claim chart, a video of the YouTube Remote system that the parties and the
`
`undersigned closely scrutinized in evaluation of other motions (Moss Exh. L).1 It shows
`
`playback of a queue of videos from a “Best of YouTube” tab — not the “Queue” tab. Thus,
`
`the theory that the queue of videos in the other tabs could have been remote playback queues
`
`
`1 Citing https://www.youtube.com/watch?v=EGdsOslqG2s (last visited April 11, 2023).
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 8 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`— and that the YouTube Remote system could have been “operating in a first mode in which
`
`the computing device is configured for playback of a remote playback queue provided by a
`
`cloud-based computing system associated with a cloud-based media service,” per limitation 1.4
`
`— was adequately disclosed, even if Sonos disagrees with it. This order declines to strike
`
`material related to the YouTube Remote system’s provision of automatic playback.
`
`C.
`
`BOSE PRODUCTS.
`
`Third, Sonos avers that Google improperly relied upon a number of undisclosed Bose
`
`products as prior art in Dr. Schonfeld’s reports (Sonos Br. 9–11). According to Sonos,
`
`although Google disclosed the primary reference, the Bose Lifestyle 50 System, it did not
`
`disclose the “Bose Link communication protocol” and the “Lifestyle SA-2 and SA-3 Stereo
`
`Amplifiers” (Sonos Br. 9 (citing Moss Exh. D)). Sonos asserts that the primary reference did
`
`not include those products, as demonstrated by the owner’s guide, among other documents
`
`(Sonos Br. 9 (citing Moss Exhs. M, N, O, P, Q)). What’s more, according to Sonos, it would
`
`be impossible for Dr. Schonfeld to show that these products were part of the primary reference
`
`because the primary reference was discontinued before the amplifiers were even released
`
`(Sonos Br. 9–10 (citing Moss Exhs. R, S)). As such, “there is little discernable connection
`
`between the previously disclosed Bose Lifestyle 50 System, and the newly disclosed
`
`communication protocol and amplifiers (other than a common manufacturer)” (Sonos Br. 10).
`
`Accordingly, Google’s failure to disclose these products was “inherently prejudicial to Sonos”
`
`(Sonos Reply Br. 5).
`
`Not so. This order acknowledges that Sonos makes colorable arguments, but Sonos
`
`should have made them roughly nine months ago. Google disclosed these Bose products on
`
`June 6, 2022, when it served Dr. Schonfeld’s opening report on invalidity for the patent
`
`showdown round of summary judgment motions (Kaplan Opp. Exh. 11 ¶¶ 619–722; see, e.g.,
`
`¶¶ 653, 677). It served documents relating to these Bose products even earlier, on September
`
`30, 2021 (Kaplan Opp. Decl. ¶ 3). As Google observes, Sonos seems to have sat on its hands
`
`waiting to strike expert report language, just like it did during the patent showdown. Again,
`
`Sonos “strategically chose not to initiate motion practice on this issue.” Google, 2022 WL
`
`8
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 9 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`3052559, at *5. Google is correct that “[i]f Sonos believed that certain Bose-related theories
`
`disclosed in Dr. Schonfeld’s report were missing from Google’s invalidity contentions, Sonos
`
`could have raised the issue at any time thereafter,” including during the two depositions of Dr.
`
`Schonfeld, one of which was taken after the motion to strike was filed (Google Opp. 9). In any
`
`case, as Google observes, Sonos’s technical expert Dr. Kevin Almeroth discussed these Bose
`
`products at length in both of his expert reports (Google Br. 10 (citing Kaplan Opp. Exhs. 15
`
`¶¶ 215–250, 748–964; 16 ¶¶ 348–408, 1249–1557)).
`
`Like the order on Sonos’s prior motion to strike, this order will not reward Sonos’s delay
`
`tactics, particularly when it is clear that Sonos was not actually prejudiced. See BLK
`
`Enterprises, LLC v. Unix Packaging, Inc., 2018 WL 5993839, at *2 (C.D. Cal. Oct. 2, 2018)
`
`(Judge Karen L. Stevenson). Because any non-disclosure was harmless, this order declines to
`
`strike material related to the Bose products.
`
`2.
`
`SONOS’S MOTION: NEW NON-INFRINGEMENT THEORIES.
`
`Turning to the next batch of arguments, Sonos contends that Google improperly
`
`introduced previously undisclosed non-infringement theories in both Dr. Bhattacharjee and Dr.
`
`Schonfeld’s rebuttal reports. Specifically, Sonos enumerates five purportedly new non-
`
`infringement theories in Dr. Bhattacharjee’s rebuttal report and one purportedly new non-
`
`infringement theory in Dr. Schonfeld’s rebuttal report. This order finds that none are, in fact,
`
`new theories.
`
`First, Sonos argues that Google stated for the first time in Dr. Bhattacharjee’s rebuttal
`
`report “that limitation 1.7 of the ’033 Patent is not infringed because the setPlaylist message
`
`sent by the Sender to the MDx server is not identical to the setPlaylist message sent by the
`
`MDx server to the Receiver” (Sonos Br. 11). Suffice to say, under limitation 1.7, the “Sender”
`
`is a control device and the “Receiver” is a playback device. In response to interrogatory 12,
`
`Google expressly stated that: (1) “a YouTube application running on the alleged computing
`
`device transmits a ‘setPlaylist’ message ‘to one or more MDx servers,’” (2) “[t]he MDx
`
`servers then generate a further setPlaylist message,” and (3) “it is the MDx server, not the
`
`alleged computing device, that transmits an instruction for the . . . playback device” (Moss
`
`9
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 10 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Exh. J at 47–48). Sonos may disagree that the messages sent and received by the MDx server
`
`are, in fact, different such that they fail to satisfy limitation 1.7, but this theory of non-
`
`infringement was sufficiently disclosed.
`
`Second, Sonos argues that Google stated for the first time in Dr. Bhattacharjee’s rebuttal
`
`report “that limitation 1.7 of the ’033 Patent is not infringed because a videoID is not used by
`
`Receiver [sic] to retrieve at least one media item in the remote playback queue because
`
`(a) Bandaid URLs are used to retrieve rather than videoId and (b) a Receiver obtains only
`
`chunks of a media item at a time rather than a whole media item” (Sonos Br. 12). No detailed
`
`discussion of technical terms is warranted here. As is arguably betrayed by the sentence
`
`structure, Dr. Bhattacharjee’s expert report merely provided additional explanation regarding
`
`the theory of non-infringement that Google disclosed in various interrogatory responses.
`
`Sonos is correct that “disclosing a technical explanation of how a videoId results in retrieval of
`
`a media item is not the same as arguing that a videoId is not ‘use[d]’ by the playback device ‘to
`
`retrieve’ a media item” (Sonos Reply Br. 8), but Sonos had what it needed to connect the dots
`
`and conduct discovery on this theory of non-infringement — which it did, as Google points out
`
`(Google Opp. 15 (citing Kaplan Opp. Exh. 8 at 85:3–94:11, 113:15–115:7)). In other words,
`
`this theory of non-infringement was sufficiently disclosed.
`
`
`
`Third, Sonos argues that Google stated for the first time in Dr. Bhattacharjee’s rebuttal
`
`report that limitations 1.4 and 1.7 of the ’033 patent are not infringed because, in essence, a
`
`computing device is not configured for playback of the remote playback queue prior to the
`
`transfer of playback responsibility to a playback device (Sonos Br. 12). Google’s interrogatory
`
`language sufficiently introduced its theory of non-infringement here, expressly stating that
`
`“when playing back media on the alleged ‘computing device,’ [an] accused YouTube
`
`application plays back a local queue stored on the computing device” such that “Sonos has
`
`failed to show that [an] accused YouTube application infringes the ‘remote playback queue’
`
`limitations that require playback of the remote playback queue on the computing device”
`
`(Moss Exh. J at 60) (emphases added). Sonos’s argument appears to be motivated not by
`
`prejudice or surprise but rather by its disagreement with Google that the accused products can
`
`10
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 11 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`have both a local playback queue and a remote playback queue. To say that Sonos’s
`
`contentions did not allow for this possibility, however, is a step too far. This theory of non-
`
`infringement was sufficiently disclosed.2
`
`Fourth, Sonos argues that Google stated for the first time in Dr. Bhattacharjee’s rebuttal
`
`report “that a Google Hub device is not a ‘computing device’ as claimed by claim 1 of the ’033
`
`Patent” (Sonos Br. 12). But this was directly responsive to an infringement argument made in
`
`Dr. Schmidt’s opening report about initiating playback on a Google Hub device and then
`
`transferring playback to a second Google Hub device (see Google Br. 9 –11 (citing Kaplan
`
`Exh. 2 ¶¶ 178, 247)). According to Google, it could not have disclosed this position earlier
`
`because Sonos did not disclose this “new theory of infringement” earlier (Google Opp. 18).
`
`For that reason, Google moves to strike Sonos’s infringement contentions related to the Google
`
`Hub device, which Sonos opposes (Google Br. 9–11; Sonos Opp. 17–21). As will be discussed
`
`below, this order disagrees that Sonos disclosed a new theory of infringement involving the
`
`Google Hub device. In any event, because both sides’ experts spoke to the Google Hub
`
`device’s alleged infringement, this order declines to strike related responsive material.
`
`Fifth, Sonos argues that Google stated for the first time in Dr. Bhattacharjee’s rebuttal
`
`report “that a [Google] Hub device running YT Main app does not satisfy limitations 1.5–1.6
`
`of the ’033 Patent because it pauses playback when the Cast icon is selected” (Sonos Br. 12).
`
`This order declines to strike such material involving the Google Hub device for the reasons
`
`stated directly above.
`
`Lastly, Sonos argues that Google stated for the first time in Dr. Schonfeld’s rebuttal
`
`report “that the Accused Google Controllers do not ‘cause storage’ of zone scenes and
`
`therefore do not infringe asserted independent claims 1 and 9 of the ’966 patent” (Sonos Br.
`
`13) (emphasis omitted). According to Sonos, Google’s interrogatory responses only argued
`
`
`2 Sonos’s related argument that Dr. Bhattacharjee newly and thereby improperly interpreted
`remote playback queue in limitation 1.4 to refer to the same remote playback queue in limitation
`1.7 is flatly rejected. As Google observes, this is not expert opinion but rather a well-settled
`aspect of interpreting claim language (Google Opp. 16–17 (citing X One, Inc. v. Uber Tech. Inc.,
`440 F. Supp. 3d 1019, 1034–35 (2020) (Judge Lucy H. Koh)).
`11
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 12 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`this “lack of storage” with respect to dependent claim 3, from which asserted claim 4 depends
`
`(ibid.). But as explained by Google, just because it supplemented its interrogatory response to
`
`provide additional disclosure regarding non-infringement of claim 3 does not mean that it
`
`disclaimed its original response that all of the asserted independent claims did not meet the
`
`“causing storage” limitations (Google Opp. 19 (citing Kaplan Opp. Exh. 18 at 39–42)).
`
`Google incorporated its previous response by reference into its supplemental responses. As
`
`such, Google’s theory of infringement was sufficiently disclosed.
`
`3.
`
`SONOS’S MOTION: NEW NON-INFRINGING ALTERNATIVES.
`
`Turning to the final batch of arguments, Sonos asserts that Google improperly introduced
`
`three previously undisclosed non-infringing alternatives in both Dr. Bhattacharjee and Dr.
`
`Schonfeld’s rebuttal reports.
`
`First, Sonos contends that Google stated for the first time in Dr. Bhattacharjee’s rebuttal
`
`report that a non-infringing alternative existed at the time of infringement “consisting of the
`
`‘receiver device not [] send[ing] the accused getWatchNext and/or getPlayer requests,’ with
`
`the ‘receiver device’ instead ‘send[ing] a request to a Onesie agent’” (Sonos Br. 15 (quoting
`
`Moss Exh. B ¶ 288)). But this was disclosed in, inter alia, Google’s response to interrogatory
`
`18. In that response, Google explained that the playback device could “send a request to a
`
`Onesie agent,” which would be tasked with obtaining media data by making “GetWatchNext”
`
`and “GetPlayer” requests, and would then “stream the media data from the Onesie agent to the
`
`receiver device” (Kaplan Opp. Exh. 24 at 13)). That Google later incorporated into its
`
`response showdown opinions regarding the Onesie agent and the ’615 patent did not serve to
`
`change or erase this disclosure regarding the Onesie agent and the ’033 patent (see Google
`
`Opp. 21–22).
`
`Next, Sonos contends that Google improperly expanded on what was disclosed as “NIA
`
`#4” in Google’s interrogatory response and “Alternative #3” in Dr. Bhattacharjee’s rebuttal
`
`report: continuing playback at a control device after playback has been transferred to a
`
`playback device (Sonos Br. 15). According to Sonos, Alternative #3 contained three additional
`
`alternatives to infringement (Sonos Br. 16). This order disagrees. That this alternative “would
`
`12
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 13 of 19
`
`
`
`apply to ‘all of the YouTube applications,’ including YouTube Music” was never disclaimed;
`
`rather, Google expressly disclosed that the alternative applied to “Google’s accused products,”
`
`which would cover all of the YouTube applications (Sonos Br. 16 (emphasis in original);
`
`Kaplan Opp. Exh. 24 at 14). Meanwhile, that “the alternative could be implemented so that all
`
`of the YouTube applications default to pausing playback of the media . . . upon transfer” was
`
`merely explanation of Google’s existing theory in response to language in Dr. Schmidt’s
`
`opening expert report, which stated that an accused product is configured for playback of the
`
`remote playback queue even when it is paused and not playing back media (Sonos Br. 16
`
`(emphasis in original); Moss. Exh. B ¶ 280).
`
`But this order agrees with Sonos that Google never disclosed this alternative “could also
`
`be implemented so that the video and audio would continue to playback on the mobile device
`
`after transferring playback” (Sonos Br. 16). Google suggests that its discussion of playback
`
`continuing with “only the video alone (and the audio muted)” was “but one example of the
`
`disclosed NIA” (Google Opp. 23). Yet there is no language in its interrogatory response —
`
`e.g., “e.g.” — that suggests this was but one example (Kaplan Opp. Exh. 24 at 14). As such,
`
`Sonos’s motion to strike as to the relevant language in paragraph 280 of Dr. Bhattacharjee’s
`
`rebuttal report is GRANTED.
`
`Finally, Sonos argues that Google improperly advanced a new non-infringing alternative
`
`in Dr. Schonfeld’s rebuttal report, called “No Identification of Groups as Zone Scenes” (Sonos
`
`Br. 17 (citing Moss Exh. E ¶¶ 178–81)). Note Dr. Schonfeld himself acknowledged that he did
`
`not discuss this non-infringing alternative in his opening report (Moss Exh. E ¶ 178).
`
`According to Google, this argument “elevates form over substance” because this non-
`
`infringing alternative “follows directly from the Court’s discussion of naming a group” in the
`
`prior order on the ’885 patent (Google Opp. 23–24). Even so, it is unclear why Google did not
`
`incorporate this non-infringing alternative when it supplemented its interrogatory responses
`
`after the patent showdown, and why it did not incorporate this non-infringing alternative in Dr.
`
`Schonfeld’s opening report. This was insufficiently disclosed.
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:20-cv-06754-WHA Document 565 Filed 04/12/23 Page 14 of 19
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Google points out that Dr. Almeroth discussed this non-infringing alternative in his reply
`
`report (Google Opp. 24 (citing Kaplan Opp. Exh. 23 ¶¶ 268–77)). But this discussion was
`
`sparse, and understandably so. Dr. Almeroth expressly “note[d] that Dr. Schonfeld ha[d] not
`
`provided sufficient details regarding this new alleged non-infringing alternative, and as a
`
`result, [Dr. Almeroth did] not have enough information to fully evaluate whether this alleged
`
`non-infringing alternative would be non-infringing, technologically viable, available to
`
`Google, or commercially acceptable” (Kaplan Opp. Exh. 23 ¶ 268). It cannot be said that this
`
`nondisclosure was substantially justified or harmless. See Fed. R. Civ. P 37(c)(1). Sonos’s
`
`motion to strike as to paragraphs 178–81 from