Case 3:21-cv-07559-WHA Document 248 Filed 05/04/23 Page 1 of 9
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SONOS, INC.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`No. C 20-06754 WHA
`No. C 21-07559 WHA
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`(Consolidated)
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`FINAL PRETRIAL ORDER
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`For GOOD CAUSE, and after a final pretrial conference, the following constitutes the final
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`pretrial order and includes rulings on the motions in limine, disputes in the joint proposed final
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`pretrial statement, and other rulings made during the final pretrial conference:
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`1. This case will go to TRIAL on MONDAY, MAY 8, 2023, starting at 7:30 A.M. each
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`day and running until 1:00 P.M. each day. Jury selection will take place TODAY,
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`MAY 4, 2023, at 8:00 A.M.
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`2. Rulings on the motions in limine, disputes in the joint proposed final pretrial
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`statement, and other rulings made during the final pretrial conference are summarized
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`below. Rulings on evidentiary objections will be taken up in turn as the parties seek
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`to introduce evidence at trial.
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`3. A jury of 6 jurors and 2 alternate jurors shall be used. No one will be prevented from
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`serving due to their vaccination status.
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`Case 3:21-cv-07559-WHA Document 248 Filed 05/04/23 Page 2 of 9
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`4. Counsel submitted different versions of the neutral statement of the case to be read to
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`the jury during voir dire because they were “unable to come to agreement” after a
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`meet and confer (Dkt. No. 641 at 2). At the final pretrial conference, however,
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`counsel for Google skimmed and promptly agreed to using Sonos’s statement.
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`Moving forward, counsel shall please make a good faith effort to come to agreement
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`during the meet and confer before filing material related to lingering disputes.
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`5. Issues concerning jury instructions will be addressed at a later time during a charging
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`conference.
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`RULINGS ON MOTIONS IN LIMINE
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`1.
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`DEFENDANT’S MOTIONS IN LIMINE NOS. 1 & 2.
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`Google filed two motions in limine to exclude evidence related to Sonos’s damages
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`theory. Specifically, Google’s first motion in limine would exclude the entire expert report and
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`all testimony of Sonos’s damages expert Dr. James Malackowski, as well as related opinion
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`and testimony of Sonos’s technical expert Dr. Kevin Almeroth. According to Google, Sonos’s
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`damages theory is unreliable in light of its use of a noncomparable mobile app, If This Then
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`That (“IFTTT”), as its foundation. As such, Google asserts that all associated expert opinion
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`must be excluded. Meanwhile, Google’s second motion in limine would exclude portions of
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`the expert report and select testimony of Dr. Malackowski. According to Google, Sonos’s
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`apportionment on account of the revenue split between an app developer and app store is
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`inappropriate, and this is not proper opinion evidence because Dr. Malackowski uses basic
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`math and public data.
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`As stated on the record, Google’s motion is DEFERRED. There are serious questions
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`about Sonos’s damages theory and associated opinion offered by Dr. Malackowski and Dr.
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`Almeroth. For now, Sonos will be allowed to put this evidence on, with the understanding that
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`the undersigned may strike it from the record, tell the jury to disregard it, and grant one of
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`these motions in limine under Rule 50, if appropriate, having benefitted from hearing the
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`evidence and cross-examination. Separately, the judge urges counsel to consider having both
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`sides’ damages experts testify back-to-back to assist the jury.
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`United States District Court
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`Case 3:21-cv-07559-WHA Document 248 Filed 05/04/23 Page 3 of 9
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`2.
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`DEFENDANT’S MOTION IN LIMINE NO. 3.
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`Google’s third motion in limine would exclude portions of the expert reports and
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`testimony of Dr. Malackowski and Dr. Almeroth regarding whether purported non-infringing
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`alternatives infringe unasserted patents.
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`This motion is DENIED AS MOOT, with the understanding that Sonos will not be offering
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`opinions that purported non-infringing alternatives infringe unasserted patents.
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`3.
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`DEFENDANT’S MOTION IN LIMINE NO. 4.
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`Google’s fourth and final motion in limine would exclude references to Google’s alleged
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`anticompetitive conduct and financial information unrelated to accused products.
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`To the extent stated herein, this motion is GRANTED IN PART and DENIED IN PART.
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`Google’s motion is GRANTED with respect to references to alleged anticompetitive conduct
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`based on salacious headlines and news articles, as these headlines and articles would be
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`irrelevant, prejudicial, and rank hearsay. Google’s motion is DENIED with respect to
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`references to alleged anticompetitive conduct based on financial data that is related to accused
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`products. This data provides a legitimate basis for alleging anticompetitive conduct, and
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`experts are paid to draw conclusions based on such data subject to cross-examination, after all.
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`Google’s motion is DENIED AS MOOT with respect to references to alleged anticompetitive
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`conduct based on financial data that is related to unaccused products, recognizing Sonos has
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`agreed not to reference such data.
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`As its final argument with respect to this motion in limine, Google introduced a dispute
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`that was only raised in the joint proposed final pretrial statement with respect to the accused
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`products for the ’966 patent (Dkt. No. 615 at 4–6). Seeing that this dispute was not addressed
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`in this motion, it will be taken up separately below.
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`4.
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`PLAINTIFF’S MOTION IN LIMINE NO. 1.
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`Sonos’s first motion in limine would limit the testimony of Google’s damages expert, Dr.
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`W. Christopher Bakewell. To the extent stated herein, this motion is GRANTED IN PART and
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`DENIED IN PART.
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`Although Sonos raised four arguments in its motion, it stated at the final pretrial
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`conference that only one was still in dispute and “everything else is either mooted by
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`[Google’s] representations or they’re details of exhibits or arguments that we can deal with as
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`the trial progresses.” After seeking clarification, Google did not object. As such, Sonos’s
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`motion is DENIED AS MOOT with respect to all issues except the prior patent licensing
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`negotiations undertaken by Sonos and Google before their litigation commenced in 2020 (Dkt.
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`No. 591 at 6). According to Sonos, Dr. Bakewell should be precluded from testifying
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`regarding the resulting licensing settlement proposal between the parties and term sheet.
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`As stated on the record, the motion is GRANTED with respect to this issue. Dr. Bakewell
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`— and counsel for both sides, for that matter — will not be allowed to enter the licensing
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`proposal, term sheet, and other related items into evidence due to the risk of unfair prejudice
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`under Rule 403. If a cease-and-desist letter exists, however, it may be entered into evidence.
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`5.
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`PLAINTIFF’S MOTION IN LIMINE NO. 2.
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`Sonos’s second motion in limine would limit the testimony of Google’s technical expert
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`Dr. Dan Schonfeld based on the contents of his expert report. Sonos argues that the following
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`should be excluded: (1) any opinion involving invalidity of the ’966 patent, on account of
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`improper cross-referencing of opinion involving invalidity of the ’885 patent; (2) any opinion
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`that the asserted claims of the ’885 and ’966 patents are invalid as obvious over Bose prior art;
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`and (3) any opinion that “No Standalone Mode” was a purported non-infringing alternative
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`before the jury. This motion is DENIED. Specifically, it is DENIED AS MOOT with respect to
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`opinion concerning the purported non-infringing alternative, which will now be tried before the
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`jury, as discussed at a prior hearing. Otherwise, the motion is DENIED WITHOUT PREJUDICE.
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`As stated on the record, with respect to cross-referencing opinion involving invalidity,
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`Sonos will be allowed to make question-by-question objections on this issue at trial, and
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`Google will be allowed to point to where in its report it cross-references and what it cross-
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`references to. Google has brought this upon itself by having a convoluted expert report. But
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`striking all expert opinion on the invalidity of the ’966 patent would be too much. Note it
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`would allow Sonos to seek a summary judgment ruling of no invalidity by way of a motion in
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`limine, which our court of appeals cautions against. Hana Fin., Inc. v. Hana Bank, 735 F.3d
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`1158, 1162 & n.4 (9th Cir. 2013)). What’s more, a prior order expressly requested that Sonos
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`state its views on how to proceed with the pending round of summary judgment motions once
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`an order granted Google’s motion for reconsideration and withdrew the entry of summary
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`judgment in favor of Sonos on validity of the ’885 patent. Sonos requested a supplemental
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`expert report. It did not request to move for summary judgment of no invalidity with respect to
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`either patent then, and it cannot do so now on the eve of trial.
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`With respect to the Bose prior art, there appear to be underlying questions of fact that
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`require jury resolution, such as which Bose components the Bose Lifestyle 50 System
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`encompasses. Moreover, there is no harm in allowing Google to put this evidence on with the
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`understanding that it may be struck from the record under Rule 50, if appropriate, upon a
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`renewed motion to exclude this evidence once it has been presented.
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`6.
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`PLAINTIFF’S MOTION IN LIMINE NO. 3.
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`Sonos’s third motion in limine relates to invalidity based on lack of written description or
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`enablement of the ’885 and ’966 patents. Specifically, Sonos moved to exclude invalidity
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`arguments and evidence based on a lack of written description or enablement, as well as “any
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`argument that if the ’885 and ’966 patents are enabled, the prior art must be as well” (Dkt. No.
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`596 at 3). In its opposition, Google only took issue with the latter portion of this statement,
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`which allegedly mischaracterized its arguments. In any event, at the final pretrial conference,
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`the parties agreed that they should come to an agreement that would render this entire motion
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`moot.
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`As stated on the record, the parties shall meet and confer on this point, put their
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`agreement in writing, and file it. The motion is DENIED AS MOOT, without prejudice to
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`renewing this motion if the parties fail to come to an agreement after all.
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`7.
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`PLAINTIFF’S MOTION IN LIMINE NO. 4.
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`Sonos’s fourth motion in limine would preclude Google from referencing unasserted or
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`no longer asserted patents.
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`As stated on the record, this motion is DENIED. To the extent that Sonos plans to
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`mention unasserted patents to support its theory of willful infringement, Google should have
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`the right to mention what became of those unasserted patents. Google may also tell the jury
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`that it respects patents and has its own patent portfolio, as counsel suggested it would, but
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`going into greater depth in terms of quantity or quality of patent puts Google at risk of
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`evidentiary objections that are likely to be sustained.
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`8.
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`PLAINTIFF’S MOTION IN LIMINE NO. 5.
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`Sonos’s fifth and final motion in limine would exclude argument, evidence, or references
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`that Sonos acted improperly in pursuing the asserted patents. According to Google’s
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`opposition, not only was this motion overbroad, but it was also based on three arguments that
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`Google does not intend to raise.
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`This motion is DENIED AS MOOT, with the understanding that Google will not raise the
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`arguments Sonos discussed in its motion. This is without prejudice to Sonos objecting to other
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`arguments at trial related to Sonos acting improperly.
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`RULINGS ON DISPUTES FROM JOINT PROPOSED FINAL
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`PRETRIAL STATEMENT
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`1.
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`DERIVATION DEFENSE.
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`In the joint proposed final pretrial statement, the parties disputed whether Google had a
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`properly disclosed derivation defense (Dkt. No. 615 at 2, 5). An order requested supplemental
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`briefing on this issue (Dkt. No. 626). In Google’s supplemental brief, it stated that it was
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`“willing to drop its derivation defense in an effort to narrow the scope of issues for trial” (Dkt.
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`No. 650 at 2). The undersigned will hold Google to it. With the understanding that the
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`derivation defense is no longer in the case, this dispute is moot.
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`2.
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`ACCUSED PRODUCTS FOR ’966 PATENT.
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`In the joint proposed final pretrial statement, Sonos suggested that the jury will be asked
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`to determine whether computing devices with (1) the Google Home app, (2) the YouTube
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`Music app, or (3) the Google Play Music app infringe. Google countered that computing
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`devices running the YouTube Music app and the Google Play Music app were not properly
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`disclosed as accused products. This order agrees. The undersigned “denied a motion” at the
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`hearing with respect to this dispute, but since there was no motion and the undersigned has
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`adjusted his position somewhat, a brief explanation is provided below.
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`At the final pretrial conference, Google projected slides with language allegedly from the
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`cover pleading for the ’966 patent infringement contentions to support its argument that
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`computing devices running the YouTube Music app and the Google Play Music app were not
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`properly disclosed as accused products. Because the parties did not argue this as a motion with
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`exhibits — but instead as a couple sentences in the joint proposed final pretrial statement with
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`no cites — the undersigned was unable to review this document in advance of the hearing.
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`And counsel never provided or lodged the slides with the relevant language, nor did counsel
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`provide a cite to allow for finding this needle in the haystack of our voluminous record.
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`But the undersigned did review another document that supports Google’s argument:
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`Sonos’s most recently amended infringement claim chart for the ’966 patent, served on
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`December 16, 2022 (Dkt. No. 430-2; 431-7). Sonos argued at the hearing that this very
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`document supports its theory that computing devices with the Google Home app, the YouTube
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`Music app, or the Google Play Music app installed infringe. That is flatly contradicted by the
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`claim chart language, however, which provides that the accused products or “cast-enabled
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`computing devices” run the “Google Home app, either alone or together with one or more of
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`these other Cast-enabled apps,” such as the YouTube Music app or the Google Play Music app
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`(Dkt. No. 431-7 at 1) (emphasis added). In other words, the document that Sonos claims
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`supports its arguments fails to do so.
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`In sum, the accused products are those computing devices with the Google Home app
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`installed, irrespective of whether they happen to have the YouTube Music app or the Google
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`Play Music app installed. Computing devices without the Google Home app and with the
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`YouTube Music app and/or the Google Play Music app installed are not accused products.
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`3.
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`DR. SCHONFELD’S TESTIMONY RE. SUPPLEMENTAL REPORT.
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`According to Sonos, Dr. Schonfeld should not be allowed to testify to new opinions
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`disclosed in his supplemental reply report first served on April 14. According to Google, this
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`report was required so that Dr. Schonfeld could respond to new opinions that Dr. Almeroth
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`was permitted to serve on March 21; Dr. Almeroth was allowed to file a supplemental report
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`on the validity of the ’885 patent after an order on reconsideration withdrew summary
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`judgment entered in Sonos’s favor on that issue.
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`As stated on the record, by TOMORROW, MAY 5, at 12 P.M., Sonos shall file a copy of
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`Dr. Schonfeld’s supplemental reply report with portions that it alleges are new opinions
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`highlighted. By SATURDAY, MAY 6, at 12 P.M., Google may file a response. The undersigned
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`will then evaluate whether any material in Dr. Schonfeld’s report should be struck.
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`4.
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`OPENING AND CLOSING STATEMENTS.
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`Each side will have 35 minutes for its opening statement. The time allotted for closing
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`statements will be decided at a later date.
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`5.
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`TIM KOWALSKI AS WITNESS.
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`Sonos served an objection to Google’s inclusion of its employee Tim Kowalski on its
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`amended witness list because Kowalski was not included in Google’s initial witness list and
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`has not been deposed in this case. Google stated at the hearing that Mr. Kowalski was listed on
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`its “may call” list, and that he is knowledgeable about a comparable patent license that may be
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`relevant for assessing damages. As stated on the record, Sonos may have a one-day deposition
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`of Mr. Kowalski before TUESDAY, MAY 9, at 12:00 P.M. If Google does not produce Mr.
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`Kowalski, he will be barred from testifying.
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`OTHER RULINGS FROM FINAL PRETRIAL CONFERENCE
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`1.
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`AFFIRMATIVE DEFENSES.
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`Note each side shall have 14 hours to present all of the issues to be tried in this case. No
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`additional time will be allotted to affirmative defenses.
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`2.
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`STIPULATED MOTIONS IN LIMINE.
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`This order GRANTS the stipulated motions in limine included in the joint proposed final
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`pretrial statement (Dkt. No. 615 at 13–14).
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`Case 3:21-cv-07559-WHA Document 248 Filed 05/04/23 Page 9 of 9
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`3.
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`STIPULATIONS RE. TIMELY EXCHANGES.
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`In their joint proposed final pretrial statement, the parties stipulated to a scheme for
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`revealing witnesses, exhibits, and demonstratives, with times set for exchanging lists and
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`oppositions, meeting and conferring, and then filing briefs covering lingering disputes. As
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`stated on the record, the parties’ proposal of filing briefs with lingering disputes by 11:30 P.M.
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`each night before our 7:30 A.M. start time is cutting it too close. The parties shall file their
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`briefs with lingering disputes NO LATER THAN 7:30 P.M. each night of trial. Until the parties
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`file revised stipulations regarding timely exchanges to accommodate this deadline, the
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`deadlines in the undersigned’s Standing Order for Civil Jury Trials shall govern.
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`In addition, the parties shall file any objections regarding opening statement
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`demonstratives by 5:00 P.M. in lieu of 9:00 P.M., on SUNDAY, MAY 7, the day before trial
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`begins. They shall file revised stipulations regarding this particular exchange to accommodate
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`this deadline.
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`IT IS SO ORDERED.
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`Dated: May 4, 2023.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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