Case 3:20-cv-06754-WHA Document 823 Filed 06/23/23 Page 1 of 30
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`CLEMENT SETH ROBERTS (SBN 209203)
`croberts@orrick.com
`BAS DE BLANK (SBN 191487)
`basdeblank@orrick.com
`ALYSSA CARIDIS (SBN 260103)
`acaridis@orrick.com
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`The Orrick Building
`405 Howard Street
`San Francisco, CA 94105-2669
`Telephone:
`+1 415 773 5700
`Facsimile:
`+1 415 773 5759
`SEAN M. SULLIVAN (pro hac vice)
`sullivan@ls3ip.com
`J. DAN SMITH (pro hac vice)
`smith@ ls3ip.com
`MICHAEL P. BOYEA (pro hac vice)
`boyea@ ls3ip.com
`COLE B. RICHTER (pro hac vice)
`richter@ls3ip.com
`LEE SULLIVAN SHEA & SMITH LLP
`656 W Randolph St., Floor 5W
`Chicago, IL 60661
`Telephone:
`+1 312 754 0002
`Facsimile:
`+1 312 754 0003
`Attorneys for Sonos, Inc.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA,
`SAN FRANCISCO DIVISION
`
`SONOS, INC.,
`Plaintiff and Counter-defendant,
`v.
`GOOGLE LLC,
`Defendant and Counter-claimant.
`
`Case No. 3:20-cv-06754-WHA
`Consolidated with
`Case No. 3:21-cv-07559-WHA
`SONOS, INC.’S RULE 50 AND 59
`MOTION
`Judge: Hon. William Alsup
`Courtroom: 12, 19th Floor
`Trial Date: May 8, 2023
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`Case 3:20-cv-06754-WHA Document 823 Filed 06/23/23 Page 2 of 30
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`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION .................................................................................................................. 1
`I.
`LEGAL STANDARD ............................................................................................................. 1
`II.
`III. A REASONABLE JURY WAS REQUIRED TO FIND THAT GOOGLE DIRECTLY
`INFRINGES THE ’966 PATENT .......................................................................................... 1
`A.
`The jury determined that Google’s “no standalone mode” redesign infringes. .......... 2
`B. A reasonable jury could not have found that Google’s accused products do not
`store the zone scene. .................................................................................................... 4
`C. A correctly instructed jury would be required to find that the ’966 patent was
`directly infringed. ........................................................................................................ 7
`1.
`The Court’s non-infringement finding and related claim construction ruling
`are incorrect as a matter of law. ......................................................................... 8
`a. The asserted claims of the ’966 patent are apparatus claims reciting a
`single computing device with software that provides certain capabilities. .. 8
`b. The asserted claims of the ’966 patent do not require a computing device
`networked with three zone players. .............................................................. 9
`c. Google’s arguments in favor of the Court’s claim construction ruling
`are wrong as a matter of law. ..................................................................... 14
`The Court should grant Sonos judgment as a matter of law that the ’966
`patent was directly infringed or grant Sonos’s Rule 59 motion. ...................... 16
`IV. A REASONABLE JURY WAS REQUIRED TO FIND THE ’966 PATENT
`INDIRECTLY AND WILLFULLY INFRINGED ............................................................... 17
`A. A reasonable jury was required to find the ’966 patent indirectly infringed. ........... 17
`1.
`Sonos established acts of direct infringement by third parties. ........................ 17
`2.
`Sonos established Google’s inducement, knowledge of infringement, and
`that the Google Home App was not suitable for non-infringing use. .............. 18
`Sonos established Google’s specific intent to infringe. ................................... 21
`3.
`B. A reasonable jury was required to find that Google’s infringement of the ’966
`patent was willful. ..................................................................................................... 22
`IF THE COURT GRANTS SONOS A NEW TRIAL ON INFRINGEMENT OF THE
`’966 PATENT, THE COURT SHOULD CORRECT CERTAIN RULINGS. .................... 25
`VI. CONCLUSION ..................................................................................................................... 25
`
`V.
`
`2.
`
`ii
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`Case 3:20-cv-06754-WHA Document 823 Filed 06/23/23 Page 3 of 30
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`ACCO Brands, Inc. v. ABA Locks Mfrs. Co.,
`501 F.3d 1307 (Fed. Cir. 2007) ............................................................................................... 18
`
`Bayer Healthcare LLC v. Baxalta Inc.,
`989 F.3d 964 (Fed. Cir. 2021) ................................................................................................. 23
`
`California Inst. of Tech. v. Broadcom Ltd.,
`25 F.4th 976 (Fed. Cir. 2022) .................................................................................................... 1
`
`Commil USA, LLC v. Cisco Sys., Inc.,
`575 U.S. 632 (2015) ................................................................................................................ 18
`
`Dow Chem. Co. v. United States,
`226 F.3d 1334 (Fed. Cir. 2000) ................................................................................................. 7
`
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014) ................................................................................................. 3
`
`Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010) ..................................................................................... 9, 12, 14
`
`GlaxoSmithKline LLC v. Teva Pharms. USA, Inc.,
`7 F.4th 1320 (Fed. Cir. 2021), cert. denied sub nom., No. 22-37, 2023 WL
`3440748 (U.S. May 15, 2023) ................................................................................................. 21
`
`Glob.-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) .......................................................................................................... 18, 22
`
`Intel Corp. v. U.S. Int’l Trade Comm’n,
`946 F.2d 821 (Fed. Cir. 1991) ......................................................................................... 7, 9, 10
`
`INVT SPE LLC v. Int’l Trade Comm’n,
`46 F.4th 1361 (Fed. Cir. 2022) ................................................................................................ 13
`
`Ironburg Inventions Ltd. v. Valve Corp.,
`64 F.4th 1274 (Fed. Cir. 2023) ................................................................................................ 22
`
`Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.,
`383 F.3d 1337 (Fed. Cir. 2004) ............................................................................................... 23
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009) ............................................................................................... 19
`
`Lutron Elecs. Co., Inc. v. Crestron Elecs., Inc.,
`970 F. Supp. 2d 1229 (D. Utah 2013) ..................................................................................... 22
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`NetFuel, Inc. v. Cisco Sys. Inc.,
`438 F. Supp. 3d 1031 (N.D. Cal. 2020) .................................................................................... 9
`
`Silicon Graphics, Inc. v. ATI Techs., Inc.,
`607 F.3d 784 (Fed. Cir. 2010) ................................................................................................... 9
`
`Sonos, Inc. v. D&M Holdings, Inc.,
`No. 14-1330-RGA, 2017 WL 3669514 (D. Del. Aug. 24, 2017) ............................... 10, 11, 12
`
`SRI Int’l, Inc. v. Cisco Sys., Inc.,
`14 F.4th 1323 (Fed. Cir. 2021), cert. denied, 142 S. Ct. 2732 (2022) .................................... 22
`
`Suprema, Inc. v. Int’l Trade Comm’n,
`626 F. App’x 273 (Fed. Cir. 2015) ......................................................................................... 25
`
`TecSec, Inc. v. Adobe Inc.,
`978 F.3d 1278 (Fed. Cir. 2020) ............................................................................................... 18
`
`VirnetX, Inc. v. Apple Inc.,
`792 F. App’x 796 (Fed. Cir. 2019) ......................................................................................... 12
`
`Statutes
`
`35 U.S.C. § 271(a) .......................................................................................................................... 9
`
`Other Authorities
`
`Fed. R. Civ. P. 11 .............................................................................................................. 20, 23, 24
`
`Fed. R. Civ. P. 50 ............................................................................................................................ 1
`
`Fed. R. Civ. P. 59 ................................................................................................................ 1, 17, 21
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`Case 3:20-cv-06754-WHA Document 823 Filed 06/23/23 Page 5 of 30
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`I.
`
`INTRODUCTION
`Sonos is entitled to judgment as a matter of law that Google infringes the ’966 patent
`directly, indirectly, and willfully. The Court should enter judgment in Sonos’s favor, or, in the
`alternative, grant Sonos’s motion for a new trial pursuant to Rule 59.
`
`II.
`
`LEGAL STANDARD
`This Court may grant judgment as a matter of law under Federal Rule of Civil Procedure
`50 when “a reasonable jury would not have a legally sufficient evidentiary basis to find for the
`[non-moving] party on that issue.” Fed. R. Civ. P. 50(a)(1). Where, as here, the Court denied
`without prejudice Sonos’s Rule 50(a) motion, Dkt. 796, “the movant may file a renewed motion
`for judgment as a matter of law and may include an alternative or joint request for a new trial
`under Rule 59.” Fed. R. Civ. P. 50(b). Judgment as a matter of law “is proper when the evidence
`permits only one reasonable conclusion and the conclusion is contrary to that of the jury.”
`California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 985 (Fed. Cir. 2022) (quoting Monroe v.
`City of Phoenix, 248 F.3d 851, 861 (9th Cir. 2001)). “The evidence must be viewed in the light
`most favorable to the nonmoving party, and all reasonable inferences must be drawn in favor of
`that party.” Id. And under Rule 59, “[t]he court may, on motion, grant a new trial on all or some
`of the issues … after a jury trial, for any reason for which a new trial has heretofore been granted
`in an action at law in federal court.” Fed. R. Civ. P. 59(a)(1)(A).
`
`III.
`
`A REASONABLE JURY WAS REQUIRED TO FIND THAT GOOGLE
`DIRECTLY INFRINGES THE ’966 PATENT
`Sonos’s ’885 and ’966 patents are, in Google’s words, “two sides of the same coin.” See,
`e.g., Trial Transcript (“Tr.”) at 1857:19-21 (Google closing argument) (“And, again, these patents
`that cover the same -- same coin from the perspective of the zone player for one and the controller
`for the other.”). The ’885 patent claims zone players—e.g., speakers with zone scene
`technology—and the ’966 patent claims computing devices—e.g., smartphones with zone scene
`technology. The jury found the asserted claims of both patents valid, and found Google infringes
`the asserted claim of the ’885 patent.
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`At trial, Google did not dispute infringement of the vast majority of the limitations of the
`asserted claims of the ’966 patent. See, e.g., Tr. at 1867:5-1876:20. And as explained in Sonos’s
`Rule 50(a) Motion, Sonos provided substantial evidence that Google meets all the limitations of
`the asserted claims. See Dkt. 754 at 4-12, 16.
`Google presented three non-infringement arguments for the ’966 patent: (a) the redesigned
`accused products do not remain in standalone mode while the speaker groups were set up and
`invoked, (b) the speaker groups are not stored on the accused media players, and (c) Sonos failed
`to prove that any customer had networked three accused media players with a computing device
`provisioned with the Google Home App. The jury’s finding that Google does not infringe the
`asserted claims of the ’966 patent is wrong as a matter of law. Sonos addresses each non-
`infringement argument below.
`
`The jury determined that Google’s “no standalone mode” redesign infringes.
`A.
`For the redesigned products, Google contended that its products do not continue to operate
`in “standalone mode” after being added to a speaker group. This argument fails for two reasons.
`First, claim 1 of the ’966 patent does not require “continuous” operation in standalone
`mode. Standalone mode appears just twice in claim 1 of the ’966 patent, once in the initial claim
`element describing that the computing device is configured to serve as a controller for a media
`playback system and again in the final claim element describing that the first zone player
`transitions from “standalone mode” to operating in accordance with the predefined grouping:
`
`while serving as a controller for a networked media playback system
`comprising a first zone player and at least two other zone players,
`wherein the first zone player is operating in a standalone mode
`in which the first zone player is configured to play back media
`individually …
`based on the third request, causing the first zone player to transition
`from operating in the standalone mode to operating in
`accordance with the first predefined grouping of zone players
`such that the first zone player is configured to coordinate with at
`least the second zone player to output media in synchrony with
`output of media by at least the second zone player.
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`TX0001 at 40 (emphases added). Neither of these references to standalone mode require the first
`zone player remain in standalone mode throughout the entire zone scenes set up and invocation
`process. Instead, claim 1 requires the controller be programmed to serve as a controller while the
`first zone player is in standalone mode and be programmed to cause the first zone player to
`transition from a standalone mode to a group mode when the zone scene is invoked. But there is
`no requirement that the zone player remain in standalone mode after it is added to the speaker
`group (unlike in claim 1 of the ’885 patent). Tr. at 804:2-9; id. at 804:18-20. And there is no
`dispute that the programming in Google’s Home App meets these limitations—in both the
`redesign and the original accused products. Tr. at 770:3-19; 790:17-791:20.
`Second, even if claim 1 of the ’966 patent required continuous operation in standalone
`mode, the jury’s verdict that Google’s new version infringes claim 1 of the ’885 patent
`necessarily means that Google’s products meet the “standalone mode” requirements of claim 1 of
`the ’966 patent.
`At trial, Google argued that the new versions of the ’885 accused products do not infringe
`because these new versions—i.e., the addition of the “StopCurrentApp” function to the firmware
`on the accused media players—meant the products do not continue to operate in standalone mode
`after being added to the speaker group. This was Google’s only non-infringement argument for
`the ’885 patent. See Tr. at 1869:8-1872:19 (Google closing argument). Google asked the jury to
`find that its new versions did not infringe the ’885 patent because (1) “operating in standalone
`mode means” “playing music or continuous output of media,” (2) the “StopCurrentApp” function
`meant “the accused smart speaker products stop playing music or audio when there is invocation
`of the group,” and thus (3) “[w]hen you’re actually launching the group for music, they’re not
`operating in standalone mode because the sound is gone.” Tr. at 1869:17-25. The jury found in
`Sonos’s favor infringement of the ’885 patent, Dkt. 774 at 1, so it necessarily rejected that non-
`infringement argument. See Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1215 (Fed. Cir.
`2014) (“To prove literal infringement, the patentee must show that the accused device contains
`each and every limitation of the asserted claims.”); Dkt. 762 (final jury charge) at 16 (“If,
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`however, the accused product is missing even one requirement of the asserted claim, the accused
`product does not directly infringe that claim.”). Put differently, the jury necessarily found that
`Google’s “redesign” continuously operates in standalone mode from group creation through
`invocation.
`Google offered no argument at trial suggesting that its redesign might avoid infringement
`of the ’966 patent even if the redesign did not avoid infringement of the ’885 patent. See, e.g., Tr.
`at 1869:8-1872:19 (Google closing argument) (“Both of these patents require ‘while operating in
`a standalone mode’”). Nor could it. First, as explained above, Google’s “no standalone mode”
`argument made even less sense as a theory of non-infringement for the ’966 patent than it did for
`the’885 patent because the ’966 patent does not require “continuing” to operate in standalone
`mode. And second, Google’s redesign effected no change whatsoever to the Google Home App,
`which is the accused software installed on all of the ’966 accused products. See Tr. at 1282:2-5
`(MacKay testifying that he did not make any changes to the Google Home App); id. at 1805:3-8
`(Sonos closing argument quoting MacKay testimony).
`In light of the jury’s finding that Google’s “redesign” still infringes the ’885 patent,1 there
`is no basis on which a reasonable jury could conclude that Google does not infringe the ’966
`patent as to the “standalone mode” limitation.
`
`B.
`
`A reasonable jury could not have found that Google’s accused products do
`not store the zone scene.
`
`Google offered only one non-infringement theory unique to the ’966 patent: the accused
`products (in both prior and new versions) do not “cause storage” of speaker groups (aka zone
`scenes). No reasonable jury could find that the Google Home App does not cause storage of the
`zone scene. Google’s arguments regarding “causing storage” were inconsistent with the plain and
`ordinary meaning of “storage” and Google’s own witnesses and technical documents showed that
`the zone scene is stored.
`
`1 And for the reasons that Sonos has previously explained, a reasonable jury could not have found
`otherwise. See, e.g., Dkt. 754 at 1-4.
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`Google tried various ways of limiting “storage” to mean persistently stored, stored in a
`single location, or that “storage of the first zone scene” meant storing a list of the members of the
`zone scene. E.g., Tr. at 1242:10-1245:7. None of those restrictions on “storage” are consistent
`with the plain and ordinary meaning of storage, and those restrictions are not found elsewhere in
`the claims. Indeed, Dr. Schonfeld admitted that the claim language “just talks about storage”
`without expressly requiring the additional limitations that Google reads into the language. Tr. at
`1469:2-11.
`When the plain and ordinary meaning of “storage” is used, there was overwhelming
`evidence, including from Google’s own witnesses and documents, demonstrating that the Google
`Home App causes storage of the zone scene. Google’s own engineer and corporate
`representative, Ken MacKay, admitted that Google’s accused speaker groups are “saved
`persistently,” including the “the name and ID of the group.” Dkt. 754-2 (MacKay 5/10/22) at 11;
`Dkt. 754-3 at 117:20-24; Tr. at 1277:5-9. Google’s internal technical document describe that “the
`group configuration is updated and stored in the prefs file on the device.” TX6453 at p. 1
`(emphasis added). And Dr. Almeroth, Sonos’s technical expert, further corroborated these
`admissions based on his review of Google’s source code and his testing of accused products. Tr.
`at 787:23-789:25. For example, Dr. Almeroth testified that he observed Google source code that
`shows storing, noting “[t]here’s other source code that goes through the process of what
`[TX6453] describes as storing the configuration in the prefs file, and so that is certainly present in
`the source code.” Tr. at 789:15-20. And Dr. Almeroth directly observed storing in his testing,
`explaining “I mean, you can do it from the perspective of a user where you click on save and that
`group is saved, and you can come back later and that group still exists. And so you’ve caused
`storage of that group as required by the ’966 patent.” Tr. at 789:21-25.
`Google’s non-infringement theories do not provide a basis for a reasonable jury to
`conclude that Google’s products do not cause storage as required by the ’966 patent. Google’s
`argument boils down to the assertion that because “Google’s speakers manage groups
`dynamically,” the list of group members is not stored persistently by the speakers and therefore
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`the groups are not saved. See Dkt. 767 at 7-8 (emphasis added). Google’s argument is flawed
`and unsupported by the actual evidence put forth at trial.
`Take the “persistent storage” argument. Fundamentally, zone scenes must be saved
`persistently because (as Google’s witnesses admitted) after creation the zone scene can be
`invoked hours, days, or weeks later. See Tr. at 1278:15-25 (MacKay). And Mr. Mackay
`admitted that Google’s speaker groups are “saved persistently.” Dkt. 754-2 (MacKay 5/10/22) at
`11; Dkt. 754-3 at 117:17-24. Moreover, the Court has already found that Google’s speaker
`groups are saved in the context of the ’885 patent. Prior to trial, the Court construed “zone scene”
`as a “previously-saved grouping of zone players according to a common theme.” Dkt. 762 at 9
`(emphasis added). As such, claim 1 of the ’885 patent requires saving zone scenes, just as claim
`1 of the ’966 patent requires causing storage—i.e., saving—the zone scenes. And the Court
`found that Google’s older speaker versions infringe claim 1 of the ’885 patent. Dkt. 309. Thus,
`the Court has found that Google’s speaker groups are saved (which is just another way of saying
`“stored”) and (by implication) Google’s computing devices necessarily infringe the limitations in
`the ’966 patent that call for “causing storage” of the zone scenes.
`Next take the “group membership” argument. Google insists the claims of the ’966 patent
`require causing the storage of “group membership”—which Google reads to mean a list of the
`speakers who are members of the particular group. Dkt. 767 at 7-9 (emphasis added). As part of
`this argument Google says “The ‘group configuration’ on each speaker is limited to storing an
`identifier and name(s) of the speaker group(s) that that speaker belongs to; it does not and cannot
`identify any other members of any groups.” Dkt. 767 at 8. So, Google admits that the speaker
`stores “an identifier and name(s) of the speaker group(s) that that speaker belongs to.” That is
`more than enough to show infringement, but Google reads the claim to require an unrecited
`storage of a list of the speakers who are members of the particular group.
`The claims do not require storage of this membership information. In fact, the
`specification identifies storage of membership information as one non-limiting example of storing
`group information: player may save “a set of data pertaining to the scene” and “[i]n one
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`embodiment, the parameters include, but may not be limited to, identifiers (e.g., IP address) of the
`associated players.” TX0001 at 10:46-49. That example cannot limit the claims. See Dow
`Chem. Co. v. United States, 226 F.3d 1334, 1342 (Fed. Cir. 2000) (as a general rule, claims of a
`patent are not limited to the preferred embodiment); Intel Corp. v. U.S. Int’l Trade Comm’n, 946
`F.2d 821, 836 (Fed. Cir. 1991) (“Where a specification does not require a limitation, that
`limitation should not be read from the specification into the claims.”). Setting Google’s
`unsupported reading of the claims aside, the jury heard evidence that Google does store
`membership information for its speaker groups. Specifically, Mr. Mackay testified that the group
`leader “stores information about the followers that are currently connected to it.” Dkt. 754-2
`(MacKay 5/10/22) at 8; Dkt. 766-2 at 95:14-20. This is more than enough to meet “storage” of
`the zone scene, and even more than enough to meet the specification’s description of “a set of
`data pertaining to the scene.” No more is required.
`Last, Google’s argument rests on the flawed premise that speakers, and not the Google
`Home App, cause storage of the zone scene. Dkt. 767 at 8. Google’s own witness contradicts,
`and thus dooms, this argument. Mr. Mackay testified that the Home App sends the
`“MultizoneJoin_Group” message, which causes the speakers to save group information. Tr. at
`1243:3-1244:8; Dkt. 756 (Google JMOL) at 8, 11 (admitting same). See also Tr. at 1642:8-
`1643:17 (Almeroth rebuttal testimony). That satisfies the claims—including dependent claim 4
`(requiring storage on the zone player).
`
`C.
`
`A correctly instructed jury would be required to find that the ’966 patent was
`directly infringed.
`
`That leaves only one basis on which the jury might have found Google did not infringe the
`’966 patent: the Court’s ruling that “Google cannot infringe the ’966 patent with respect to
`computing devices with the Google Home app installed that are not yet networked with at least
`three zone players that may be added to overlapping zone scenes using the Google Home app.”
`Dkt. 762 at 16-17 (Instruction No. 31). Had the jury been correctly instructed that, according to
`binding precedent, a computing device installed with the Google Home App by itself infringes the
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`’966 patent, a reasonable jury would have been compelled to find that Google directly infringes
`the ’966 patent. Accordingly, the Court should grant Sonos’s motion for judgment as a matter of
`law that Google directly infringes the ’966 patent. In the alternative, the Court should grant
`Sonos’s motion for a new trial on infringement of the ’966 patent so that a correctly instructed
`jury can determine infringement.
`
`1.
`
`The Court’s non-infringement finding and related claim construction
`ruling are incorrect as a matter of law.
`
`Over Sonos’s objections2, the Court instructed the jury that “I have found that Google
`cannot infringe the ’966 patent with respect to computing devices with the Google Home app
`installed that are not yet networked with at least three zone players that may be added to
`overlapping zone scenes using the Google Home app.” Dkt. 762 at 16-17 (Instruction No. 31);
`see also id. at 15-16 (Instruction No. 28). The Court’s sua sponte finding of non-infringement
`and claim construction was wrong as a matter of law.
`
`a.
`
`The asserted claims of the ’966 patent are apparatus claims reciting a
`single computing device with software that provides certain
`capabilities.
`At trial, Sonos asserted that Google infringes claims 1, 2, 4, 6 and 8 of the ’966 patent.
`Claim 1 is an independent claim, and the other asserted claims all depend from claim 1. Each of
`these claims is an apparatus claim directed to “a computing device” that performs certain
`functions. TX0001 at 40-41. The computing device recited in claim 1 has three primary
`components: (1) one or more processors, (2) a non-transitory computer readable medium—i.e.,
`memory, and (3) that non-transitory computer readable medium must store program instructions
`that, when executed, causes the computing device to perform the functions set forth in the rest of
`the claim. This means that the computing device must have programing that allows the device to
`serve as a controller for a networked media playback system, including programming that allows
`the device to receive requests, perform functions based on those requests, and display
`representations of zone scenes. No other devices beyond this singular claimed computing device
`
`2 See, e.g., Tr. at 1749:2-6; Dkt. 753 at 3; Dkt. 720.
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`are required by claim 1. Similarly, the asserted dependent claims 2, 4, 6 and 8 do not recite any
`components beyond the claimed computing device. Instead, they specify that the program
`instructions stored on the device must, when executed, provide for additional or more specific
`capabilities beyond those recited in claim 1.
`
`b.
`
`The asserted claims of the ’966 patent do not require a computing
`device networked with three zone players.
`
`As Sonos has explained, Sonos’s patent claims to a “computing device” are infringed
`whenever Google (or its customers) makes, uses, sells, offers to sell, or imports into the United
`States a computing device installed with software capable of performing the claimed functions.
`See 35 U.S.C. § 271(a). Google infringes the claims even if no one actually carries out the
`claimed functions. Intel, 946 F.2d at 832. Instead, infringement occurs “so long as the product is
`designed ‘in such a way as to enable a user of that [product] to utilize the function . . . without
`having to modify [the product].’” Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 794
`(Fed. Cir. 2010) (citation omitted). See also, e.g., Dkt. 309 at 9 (citing Finjan, Inc. v. Secure
`Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) and NetFuel, Inc. v. Cisco Sys. Inc., 438
`F. Supp. 3d 1031, 1035 (N.D. Cal. 2020)). The Court’s instruction appears to accept this
`caselaw—stating that Google does not infringe “until networked with at least three zone players
`that may be added to overlapping zone scenes using the Google Home app” (emphasis added),
`but the first part of the instruction—that the computing device must be “networked with at least
`three zone players” is still incorrect.
`There are no limitations of the ’966 patent that require the computing device be networked
`with three zone players. Claim 1 requires that a computing device be programmed so that it can
`perform a series of functions that include “serving as a controller for a networked media playback
`system,” but the claim does not recite a computing device that is currently or already networked
`with that system (such as unasserted method claim 17 does). See TX0001 at 40. For example,
`claim 1 requires programming that allows the computing device to “receiv[e] a first request to
`create a first zone scene comprising a first predefined grouping of zone players including at least
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`the first zone player and a second zone player.” TX0001 at 40. All of that functionality is
`contained on the Google Home App before the computing device is networked to the speakers.
`The Google Hom