`
`
`
`
`
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`Sean Pak (Bar No. 219032)
`seanpak@quinnemanuel.com
`Melissa Baily (Bar No. 237649)
`melissabaily@quinnemanuel.com
`James Judah (Bar No. 257112)
`jamesjudah@quinnemanuel.com
`Lindsay Cooper (Bar No. 287125)
`lindsaycooper@quinnemanuel.com
`Iman Lordgooei (Bar No. 251320)
`imanlordgooei@quinnemanuel.com
`50 California Street, 22nd Floor
`San Francisco, California 94111-4788
`Telephone:
`(415) 875-6600
`Facsimile:
`(415) 875-6700
`
`Marc Kaplan (pro hac vice)
`marckaplan@quinnemanuel.com
`191 N. Wacker Drive, Ste 2700
`Chicago, Illinois 60606
`Telephone:
`(312) 705-7400
`Facsimile:
`(312) 705-7401
`
`Attorneys for GOOGLE LLC
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
` Case No. 3:20-cv-06754-WHA
`Consolidated with Case No. 3:21-cv-07559-
`WHA
`
`GOOGLE LLC’S RESPONSE TO
`SONOS’S REPLY RE THE COURT’S
`REQUEST FOR FURTHER BRIEFING
`CONCERNING WRITTEN
`DESCRIPTION (DKT. 789)
`
`
`Plaintiff and Counter-
`Defendant,
`
`
`SONOS, INC.,
`
`
`vs.
`
`GOOGLE LLC,
`
`
`Defendant and Counter-
`Plaintiff.
`
`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
`
`
`
`
`
`
`
`Case No. 3:20-cv-06754-WHA
`GOOGLE’S RESP. TO SONOS REPLY RE REQUEST FOR FURTHER BRIEFING
`
`
`
`Case 3:20-cv-06754-WHA Document 807 Filed 06/02/23 Page 2 of 5
`
`
`
`Google submits this short response to address a brand-new argument raised in Sonos’s reply
`brief (Dkt. 789, “Reply”), which was not raised in its prior summary judgment briefing nor in its
`discovery responses. Despite having repeatedly argued at trial that “Party Mode” is not a “zone
`scene” as claimed for a variety of reasons (e.g., Trial Tr. at 458:5-20 (Lambourne), 1659:19-1660:5
`(Almeroth)), Sonos’s Reply now contends that Figure 7 of the ’885 and ’966 Patents provides
`written description support for overlapping zone scenes because it shows a user interface with “a
`‘Party Mode’ zone scene and a ‘Morning Wakeup’ zone scene.” Reply at 4. This last-minute
`turnabout by Sonos, while potentially relevant to Google’s invalidity arguments under Rule 50(a),
`misses the mark in terms of the written description issue at hand. Figure 7 (left) and the entirety of
`the specification’s description of that figure (right) are reproduced below:
`
`
`
`“FIG. 7 shows an example user
`interface for invoking a zone scene.”
`(’885 patent at 4:4-5);
`
`
`“FIG. 7 shows an example user
`interface for invoking a zone scene. The
`user interface of FIG. 7 shows a Zone
`Menu
`that
`includes
`selectable
`indications of zone scenes.”
`(’885 patent at 11:12-14).
`
`
`
`
`Figure 7 and its accompanying descriptions fail as a matter of law to provide written
`description support for overlapping zone scenes for at least the following reasons: First, Federal
`Circuit authority makes clear that “novel aspects of the invention must be disclosed and not left to
`inference.” Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1380 (Fed. Cir. 2002)
`(emphasis added). Here, Figure 7 and its accompanying descriptions do not include any discussion
`of the specific zone players in the “Party Mode” or “Morning Wakeup” zone scenes. Critically,
`there is no mention of the zone players overlapping. Nor is there any disclosure in the specifications
`that “Party Mode” in this figure comprises all the zone players in the home. In fact, the phrases
`
`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
`
`
`
`
`
`
`
`
`1
`Case No. 3:20-cv-06754-WHA
`GOOGLE’S RESP. TO SONOS REPLY RE REQUEST FOR FURTHER BRIEFING
`
`
`
`Case 3:20-cv-06754-WHA Document 807 Filed 06/02/23 Page 3 of 5
`
`
`
`“Party Mode” and “Morning Wakeup” do not even appear in the patent outside of Figure 7 because
`references to the “Party Mode” feature of the prior art Sonos 2005 system were omitted from the
`provisional application and subsequently from the non-provisional applications. See Dkt. 785 at 3.
`Although the prior art Sonos 2005 system included a “Party Mode” that consisted of all the
`zone players in the home, as described by Dr. Schonfeld during trial as part of his obviousness
`analysis taking into account the background knowledge of the prior art, the written description
`requirement cannot be supplemented by the background knowledge of those skilled in the art—
`instead, the test for adequate written description support looks only to the “four corners of the
`specification.” See, e.g., Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1319-23 (Fed. Cir. 2017)
`(“Rivera argues that the background knowledge of those skilled in the art can supplement the
`teaching in the specification to provide written description support. We reject Rivera’s argument.
`As we explained in Ariad, the written description inquiry looks to ‘the four corners of the
`specification’ to discern the extent to which the inventor(s) had possession of the invention as
`broadly claimed.”) (citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`2010) (en banc)) (emphasis added). Accordingly, since neither Figure 7 nor any disclosure in the
`written specification describes the “Party Mode,” there is nothing within the “four corners of the
`specification” that would inform those of ordinary skill in the art that Sonos was in possession of
`overlapping zone scenes. Nor is it enough that “Party Mode” in the prior art Sonos 2005 system
`rendered obvious overlapping zone scenes. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`1310 (Fed. Cir. 2008) (“Obviousness simply is not enough; the subject matter must be disclosed to
`establish possession.”); Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“One
`shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed
`limitations, not that which makes it obvious.”).
`Second, an adequate written description requires “a description of an invention, not an
`indication of a result that one might achieve if one made that invention.” Regents of the Univ. of
`Cal. v. Eli Lilly & Co., Inc., 119 F.3d 1559, 1568 (Fed. Cir. 1997) (emphasis added); Taylor v. Iancu,
`809 F. App’x 821, 824 (Fed. Cir. 2020) (a description that amounts to “a ‘mere wish or plan’ for
`obtaining the claimed invention” fails the written description requirement). Even setting aside that
`
`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
`
`
`
`
`
`
`
`
`2
`Case No. 3:20-cv-06754-WHA
`GOOGLE’S RESP. TO SONOS REPLY RE REQUEST FOR FURTHER BRIEFING
`
`
`
`Case 3:20-cv-06754-WHA Document 807 Filed 06/02/23 Page 4 of 5
`
`Figure 7 and its accompanying description do not disclose overlapping zone scenes, the disclosures
`nevertheless cannot satisfy the written description requirement because they disclose, if anything,
`merely a result, not any particular way of achieving that result. Indeed, Figure 7 simply shows “an
`example user interface for invoking a zone scene.” ’885 patent at 4:4-5. It says nothing about how
`to implement a system that creates, saves, and invokes overlapping zone scenes—again, leaving
`that disclosure, at best, to inference. See, e.g., Crown Operations Int’l, 289 F.3d at 1380 (“novel
`aspects of the invention must be disclosed and not left to inference.” (emphasis added)).
`Even Sonos’s counsel argued at trial that Figure 7 relates to a different patent’s claims
`directed to simultaneously displaying zone scenes, but does not say anything about overlapping
`zone scenes. Trial Tr. at 1193:11-24 (Mr. Shea: “this was not talking about the claim language of
`the patents in suit and the word ‘overlap’ or the discussion of overlap was not being discussed
`specifically here. It was about simultaneous display”). Sonos also elicited the following testimony
`from Mr. Lambourne regarding the “Party Mode” in his conception document (from which Figure
`7 was copied): “For instance, Party Mode for somebody might not be: I want to play all the rooms
`in the house. Maybe Party Mode for somebody is: I want to play in all the rooms but not the baby’s
`room, for instance.” Trial Tr. at 458:5-20 (emphasis added). Thus, per Mr. Lambourne, the Party
`Mode in Figure 7 by itself (without taking into consideration background knowledge of the prior art
`Sonos 2005 system) had no predefined set of zone players associated with it and, as such, could not
`disclose overlapping zone scenes without additional information going beyond the “four corners of
`the specification.”
`In sum, the fact that Sonos now belatedly—and for the first time—relies on Figure 7 does
`nothing more than confirm that there is a complete lack of written description support for
`overlapping zone scenes.
`Dated: June 2, 2023
`
`Respectfully submitted,
`
`
`
`/s/ Sean Pak
`Attorneys for GOOGLE LLC
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`Counsel for Google LLC
`3
`Case No. 3:20-cv-06754-WHA
`GOOGLE’S RESP. TO SONOS REPLY RE REQUEST FOR FURTHER BRIEFING
`
`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
`
`
`
`Case 3:20-cv-06754-WHA Document 807 Filed 06/02/23 Page 5 of 5
`
`CERTIFICATE OF SERVICE
`Pursuant to the Federal Rules of Civil Procedure and Local Rule 5-1, I hereby certify
`that, on June 2, 2023, all counsel of record who have appeared in this case are being served with a
`copy of the foregoing via the Court’s CM/ECF system.
`
`DATED: June 2, 2023
`
`By:
`
`/s/ Sean Pak
`
`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
`
`4
`Case No. 3:20-cv-06754-WHA
`GOOGLE’S RESP. TO SONOS REPLY RE REQUEST FOR FURTHER BRIEFING
`
`