Case 3:20-cv-06754-WHA Document 570 Filed 04/19/23 Page 1 of 2
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`quinn emanuel trial lawyers | san francisco
`50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL (415) 875-6600 FAX (415) 875-6700
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`seanpak@quinnemanuel.com
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`April 19, 2023
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`Via CM-ECF
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`Hon. William H. Alsup
`U.S. District Court Judge
`United States District Court
`Northern District of California
`450 Golden Gate Avenue, Courtroom 12
`San Francisco, CA 94102
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`Sonos, Inc. v. Google LLC, NDCA Case No. 3:20-06754
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`Re:
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`Your Honor:
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`I write in response to Sonos, Inc.’s (“Sonos”) April 18, 2023 letter brief to the Court (Dkt.
`569) requesting “clarification on whether Google will be permitted to try the invalidity of claims
`18, 19, and 25 of the ‘615 patent” in the forthcoming trial in this action. In its request, Sonos
`argues that “there is no reason to try the ‘615 patent in the upcoming trial.” Id. at 2. Google
`respectfully disagrees. There is good reason to try the ‘615 patent at the upcoming trial because
`Google still has a live claim for a declaratory judgment of invalidity of claims 18, 19, and 25 of
`the ‘615 patent that is unaffected by any of the issues raised in Sonos’s letter.
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`Sonos’s offer “to provide a consent judgment that claims 18, 19, and 25 of the ‘615 patent
`are invalid in light of the Court’s showdown judgment order” does not resolve Google’s claim
`because Sonos would retain its right to appeal the Court’s showdown order, thereby potentially
`only delaying Google’s right to a jury finding of invalidity of claims 18, 19, and 25. Nor does
`Sonos’s consent judgment offer otherwise eliminate any case or controversy, such as by providing
`a covenant not to sue and release for past conduct.
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`Similarly, the PTAB’s finding of invalidity of claims 18, 19, and 25 also does not resolve
`Google’s claim because, again, Sonos retains the right to appeal the PTAB finding and, moreover,
`the PTAB found invalidity based on a different set of prior art than the YouTube Remote prior art
`system asserted in this case. Accordingly, Google would be highly prejudiced were the Court to
`prevent Google’s invalidity claim from being decided at trial and Sonos later reverses the PTAB’s
`findings on appeal.
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`quinn emanuel urquhart & sullivan, llp
`ATLANTA | AUSTIN | BERLIN | BOSTON | BRUSSELS | CHICAGO | DALLAS | DOHA | HAMBURG | HONG KONG | HOUSTON | LONDON |
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`Case 3:20-cv-06754-WHA Document 570 Filed 04/19/23 Page 2 of 2
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`And although Sonos now alleges a lack of subject matter overlap between the ‘615 patent
`and the ‘885 and ‘966 patents, that is irrelevant to the question of whether Google’s claims for
`declaratory relief may be tried at the same time. Tellingly, Sonos never sought to bifurcate trial
`on the “direct control” and “zone scenes” patents despite the lack of overlap it now raises. And at
`bottom, these patents are all part of Google’s declaratory judgment complaint and, thus, Google
`has a Constitutional right to a jury trial on its claims notwithstanding any purported lack of overlap.
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`Further, the Court’s prior showdown order finding claim 13 invalid did not address claims
`18, 19, or 25—all of which include further narrowing limitations that were not addressed in the
`Court’s showdown order. Although Sonos has offered a consent judgment that these claims are
`invalid in view of the Court’s showdown order, it has not stipulated unconditionally that the
`additional narrowing limitations in these claims are taught by or obvious in view of Google’s prior
`art. Thus, there is still a dispute that must be decided by the jury as factfinder. And any risk of
`inconsistent judgments could and should be addressed by a jury instruction that claim 13 has been
`found invalid and the jury is to now consider whether the additional limitations in claims 18, 19,
`and 25 would also have been obvious to those of ordinary skill in the art.
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`There is no need for the clarification Sonos seeks, as the parties have been fully aware that
`there is a live case or controversy as to the invalidity of claims 18, 19, and 25 of the ‘615 patent.1
`And, as the Court made clear in its recent summary judgment order, with the exception of a carve-
`out for Google’s design-around, the “issues now set for trial” include “any and all remaining issues
`in the entire case.” Dkt. 566 at 33. Sonos’s request should be denied.
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`Respectfully submitted,
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`QUINN EMANUEL URQUHART & SULLIVAN, LLP
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`Sean Pak
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`SSP
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`1 For example, even after the Court’s finding of invalidity of claim 13 of the ‘615 patent in the
`showdown order, the parties have continued to litigate claims 18, 19, and 25 of the ‘615 patent,
`such as by submitting expert reports on the invalidity of claims 18, 19, and 25 of the ‘615 patent.
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`2
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