Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 1 of 31 PageID #: 323
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-259-LPS
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`JURY TRIAL DEMANDED
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`))
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`))
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`))
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`)
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`IMPLICIT, LLC,
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`SONOS, INC.,
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`DEFENDANT SONOS, INC.’S FIRST AMENDED ANSWER,
`AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS
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`Sonos, Inc. (“Sonos”), by and through its undersigned counsel, files this First Amended
`
`Answer, Affirmative Defenses, and Counterclaims to the First Amended Complaint for Patent
`
`Infringement filed by Plaintiff Implicit, LLC (“Implicit”). Except as expressly admitted herein,
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`Sonos denies all allegations in Implicit’s First Amended Complaint.
`
`NATURE OF THE ACTION
`
`1.
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`Sonos admits that the First Amended Complaint purports to be a patent
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`infringement action under the patent laws of the United Sates, Title 35 of the United States Code.
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`Sonos otherwise denies the allegations set forth in Paragraph 1 of the First Amended Complaint.
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`2.
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`Sonos denies the allegations set forth in Paragraph 2 of the First Amended
`
`Complaint.
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`THE PARTIES
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`3.
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`Sonos is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations set forth in Paragraph 3 of the First Amended Complaint, and therefore denies
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`the allegations set forth therein.
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`PAGE 1 OF 76
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`SONOS EXHIBIT 1005
`IPR of U.S. Pat. No. 8,942,252
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`

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`4.
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`Sonos admits that it is a Delaware corporation with its principal place of business
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`in Santa Barbara, California. Sonos further admits that its registered agent in the state of
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`Delaware is The Corporation Trust Company, Corporation Trust Center, 1209 Orange Street,
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`Wilmington, Delaware 19801. Sonos otherwise denies the allegations set forth in Paragraph 4 of
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`the First Amended Complaint.
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`5.
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`Sonos denies the allegations set forth in Paragraph 5 of the First Amended
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`Complaint.
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`JURISDICTION AND VENUE
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`6.
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`Sonos admits that the Court has subject matter jurisdiction over the subject matter
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`of the First Amended Complaint.
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`7.
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`Sonos admits that this Court has personal jurisdiction over Sonos, and further
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`admits that Sonos is a Delaware corporation. Sonos otherwise denies the allegations set forth in
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`Paragraph 7 of the First Amended Complaint.
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`8.
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`Sonos admits that this Court has personal jurisdiction over Sonos, and further
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`admits that Sonos is incorporated in this State. Sonos otherwise denies the allegations set forth
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`in Paragraph 8 of the First Amended Complaint.
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`9.
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`Sonos does not contest that venue is proper in this Court for the purposes of this
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`lawsuit only. Sonos otherwise denies the allegations set forth in Paragraph 9 of the First
`
`Amended Complaint.
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`10.
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`Sonos does not contest that venue is proper in this Court for the purposes of this
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`lawsuit only. Sonos otherwise denies the allegations set forth in Paragraph 10 of the First
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`Amended Complaint.
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`2
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`FACTUAL ALLEGATIONS
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`11.
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`Sonos admits that the Patents-in-Suit speak for themselves. Sonos otherwise
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`denies the allegations set forth in Paragraph 11 of the First Amended Complaint.
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`12.
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`Sonos is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 12 of the First Amended Complaint, and therefore
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`denies the allegations set forth therein.
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`13.
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`Sonos is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 13 of the First Amended Complaint, and therefore
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`denies the allegations set forth therein.
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`14.
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`Sonos admits that it sells audio playback devices (referred to herein as “Sonos
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`Players”) that are capable of being grouped together such that they play the same music in
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`synchrony. Sonos otherwise denies the allegations set forth in Paragraph 14 of the First
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`Amended Complaint.
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`15.
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`Sonos admits that as of the date of this Answer, the particular URL referenced in
`
`footnote 1 to Paragraph 15 of the First Amended Complaint states that (a) “[u]sing the Sonos app,
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`you can group two or more speakers together so they play the same music in sync” and (2)
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`“[s]peakers that are grouped together will share the same Queue of upcoming songs, and continue
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`to play in sync with each other until you ungroup the speakers using the Sonos app.” Sonos further
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`admits that in some Sonos Household setups, Sonos Players may communicate with one another
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`over a proprietary mesh network called SonosNet. Sonos further admits that Paragraph 15 of the
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`First Amended Complaint includes what appears to be an excerpt from a document entitled “Sonos
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`System Overview” that is found at the URL identified in the body of Paragraph 15 of the First
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`3
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`Amended Complaint. Sonos otherwise denies the allegations set forth in Paragraph 15 of the First
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`Amended Complaint.
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`16.
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`Sonos admits that when a group of Sonos Players is being formed in a Sonos
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`Household, one Sonos Player is considered the coordinator of the group and the other one or
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`more Sonos Players are members of the group. Sonos further admits that once a group of Sonos
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`Players is formed in a Sonos Household, the coordinator of the group may at times function to
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`receive audio data from an audio source and then distribute the audio data to the one or more
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`members in the group. Sonos further admits that Paragraph 16 of the First Amended Complaint
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`includes what appears to be an excerpt from a document entitled “Sonos System Overview” that
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`is found at the URL identified in the body of Paragraph 15 of the First Amended Complaint.
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`Sonos otherwise denies the allegations set forth in Paragraph 16 of the First Amended
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`Complaint.
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`17.
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`Sonos denies the allegations set forth in Paragraph 17 of the First Amended
`
`Complaint.
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`18.
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`Sonos admits that once a group of Sonos Players is formed in a Sonos Household,
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`the one or more members of the group may at times function to send SNTP poll messages to the
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`coordinator of the group. Sonos otherwise denies the allegations set forth in Paragraph 18 of the
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`First Amended Complaint.
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`19.
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`Sonos admits that in some Sonos Household setups, certain communications
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`between Sonos Players in a Sonos Household are encrypted. Sonos otherwise denies the
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`allegations set forth in Paragraph 19 of the First Amended Complaint.
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`20.
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`Sonos admits that it has an End User License and Warranty Agreement (EULA)
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`that governs the use of the software and related firmware and documentation provided by Sonos.
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`4
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`The terms and conditions of Sonos’s EULA speak for themselves. Sonos otherwise denies the
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`allegations set forth in Paragraph 20 of the First Amended Complaint.
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`21.
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`Sonos denies the allegations set forth in Paragraph 21 of the First Amended
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`Complaint.
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`COUNT I – [ALLEGED] INFRINGEMENT OF THE ’791 PATENT
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`22.
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`Sonos repeats, reiterates, and realleges its above answers to Paragraphs 1-21 of
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`the First Amended Complaint as if fully set forth herein.
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`23.
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`Sonos admits that the ‘791 Patent was issued on June 24, 2008. Sonos further
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`admits that what appears to be a copy of the ‘791 Patent was attached as Exhibit A to the First
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`Amended Complaint. Sonos is without knowledge or information sufficient to form a belief as
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`to the truth of the remaining allegations set forth in Paragraph 23 of the First Amended
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`Complaint, and therefore denies the remaining allegations set forth therein.
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`24.
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`Sonos denies the allegations set forth in Paragraph 24 of the First Amended
`
`Complaint.
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`25.
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`Sonos admits that the ‘791 Patent speaks for itself. Sonos otherwise denies the
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`allegations set forth in Paragraph 25 of the First Amended Complaint.
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`26.
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`Sonos is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations set forth in Paragraph 26 of the First Amended Complaint, and therefore denies
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`the allegations set forth therein.
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`27.
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`Sonos is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations set forth in Paragraph 27 of the First Amended Complaint, and therefore denies
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`the allegations set forth therein.
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`5
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`28.
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`Sonos admits that it became aware of Implicit’s Original Complaint [D.I. 1] at
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`some point after the Original Complaint was filed. Sonos further admits that Implicit’s Original
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`Complaint included certain allegations regarding Implicit, the ‘791 Patent, something called
`
`“Strings OS,” and purported infringement of the ‘791 Patent. However, for the reasons set forth
`
`in Sonos’s Motion to Dismiss [D.I. 8-9], Implicit’s Original Complaint failed to state a plausible
`
`claim for infringement of the ‘791 Patent. Sonos otherwise denies the allegations set forth in
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`Paragraph 28 of the First Amended Complaint.
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`29.
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`Sonos denies the allegations set forth in Paragraph 29 of the First Amended
`
`Complaint.
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`30.
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`Sonos denies the allegations set forth in Paragraph 30 of the First Amended
`
`Complaint.
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`31.
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`Sonos denies the allegations set forth in Paragraph 31 of the First Amended
`
`Complaint.
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`32.
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`Sonos denies the allegations set forth in Paragraph 32 of the First Amended
`
`Complaint.
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`33.
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`Sonos denies the allegations set forth in Paragraph 33 of the First Amended
`
`Complaint.
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`34.
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`Sonos denies the allegations set forth in Paragraph 34 of the First Amended
`
`Complaint.
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`35.
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`Sonos denies the allegations set forth in Paragraph 35 of the First Amended
`
`Complaint.
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`36.
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`Sonos denies the allegations set forth in Paragraph 36 of the First Amended
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`Complaint.
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`6
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`37.
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`Sonos denies the allegations set forth in Paragraph 37 of the First Amended
`
`Complaint.
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`38.
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`Sonos denies the allegations set forth in Paragraph 38 of the First Amended
`
`Complaint.
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`39.
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`Sonos denies the allegations set forth in Paragraph 39 of the First Amended
`
`Complaint.
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`40.
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`Sonos denies the allegations set forth in Paragraph 40 of the First Amended
`
`Complaint.
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`41.
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`Sonos denies the allegations set forth in Paragraph 41 of the First Amended
`
`Complaint.
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`42.
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`Sonos denies the allegations set forth in Paragraph 42 of the First Amended
`
`Complaint.
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`43.
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`Sonos denies the allegations set forth in Paragraph 43 of the First Amended
`
`Complaint.
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`44.
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`Sonos denies the allegations set forth in Paragraph 44 of the First Amended
`
`Complaint.
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`45.
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`Sonos denies the allegations set forth in Paragraph 45 of the First Amended
`
`Complaint.
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`46.
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`Sonos denies the allegations set forth in Paragraph 46 of the First Amended
`
`Complaint.
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`47.
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`Sonos denies the allegations set forth in Paragraph 47 of the First Amended
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`Complaint.
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`7
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`48.
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`Sonos denies the allegations set forth in Paragraph 48 of the First Amended
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`Complaint.
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`COUNT II – [ALLEGED] INFRINGEMENT OF THE ’252 PATENT
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`49.
`
`Sonos repeats, reiterates, and realleges its above answers to Paragraphs 1-48 of
`
`the First Amended Complaint as if fully set forth herein.
`
`50.
`
`Sonos admits that the ‘252 Patent was issued on January 27, 2015. Sonos further
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`admits that what appears to be a copy of the ‘252 Patent was attached as Exhibit B to the First
`
`Amended Complaint. Sonos otherwise is without knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations set forth in Paragraph 50 of the First Amended
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`Complaint, and therefore denies the remaining allegations set forth therein.
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`51.
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`Sonos denies the allegations set forth in Paragraph 51 of the First Amended
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`Complaint.
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`52.
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`Sonos admits that the ‘252 Patent speaks for itself. Sonos otherwise denies the
`
`allegations set forth in Paragraph 52 of the First Amended Complaint.
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`53.
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`Sonos is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in Paragraph 53 of the First Amended Complaint, and therefore
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`denies the allegations set forth therein.
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`54.
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`Sonos is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in Paragraph 54 of the First Amended Complaint, and therefore
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`denies the allegations set forth therein.
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`55.
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`Sonos admits that it became aware of Implicit’s Original Complaint [D.I. 1] at
`
`some point after the Original Complaint was filed. Sonos further admits that Implicit’s Original
`
`Complaint included certain allegations regarding Implicit, the ‘252 Patent, something called
`
`8
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`SONOS EXHIBIT 1005
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`“Strings OS,” and purported infringement of the ‘252 Patent. However, for the reasons set forth
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`in Sonos’s Motion to Dismiss [D.I. 8-9], Implicit’s Original Complaint failed to state a plausible
`
`claim for infringement of the ‘252 Patent. Sonos otherwise denies the allegations set forth in
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`Paragraph 55 of the First Amended Complaint.
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`56.
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`Sonos denies the allegations set forth in Paragraph 56 of the First Amended
`
`Complaint.
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`57.
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`Sonos denies the allegations set forth in Paragraph 57 of the First Amended
`
`Complaint.
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`58.
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`Sonos denies the allegations set forth in Paragraph 58 of the First Amended
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`Complaint.
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`59.
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`Sonos denies the allegations set forth in Paragraph 59 of the First Amended
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`Complaint.
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`60.
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`Sonos denies the allegations set forth in Paragraph 60 of the First Amended
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`Complaint.
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`61.
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`Sonos denies the allegations set forth in Paragraph 61 of the First Amended
`
`Complaint.
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`62.
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`Sonos denies the allegations set forth in Paragraph 62 of the First Amended
`
`Complaint.
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`63.
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`Sonos denies the allegations set forth in Paragraph 63 of the First Amended
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`Complaint.
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`64.
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`Sonos denies the allegations set forth in Paragraph 64 of the First Amended
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`Complaint.
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`9
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`65.
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`Sonos denies the allegations set forth in Paragraph 65 of the First Amended
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`Complaint.
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`66.
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`Sonos denies the allegations set forth in Paragraph 66 of the First Amended
`
`Complaint.
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`67.
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`Sonos denies the allegations set forth in Paragraph 67 of the First Amended
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`Complaint.
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`68.
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`Sonos denies the allegations set forth in Paragraph 68 of the First Amended
`
`Complaint.
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`69.
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`Sonos denies the allegations set forth in Paragraph 69 of the First Amended
`
`Complaint.
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`70.
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`Sonos denies the allegations set forth in Paragraph 70 of the First Amended
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`Complaint.
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`71.
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`Sonos denies the allegations set forth in Paragraph 71 of the First Amended
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`Complaint.
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`DEMAND FOR JURY TRIAL
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`Implicit’s demand for a trial by jury does not state any allegations and therefore, no
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`response is required.
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`PRAYER FOR RELIEF
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`To the extent that a response is necessary, Sonos denies that Implicit is entitled to any
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`relief whatsoever, including any relief requested in the Prayer for Relief section of the First
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`Amended Complaint, including subparagraphs A-L.
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`10
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`AFFIRMATIVE AND OTHER DEFENSES
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`Without prejudice to the denials set forth herein, without admitting any of Implicit’s
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`allegations not otherwise admitted, and without undertaking any of the burdens imposed by law
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`on Implicit, Sonos asserts the following affirmative and other defenses to Implicit’s First
`
`Amended Complaint, and expressly reserves the right to allege additional defenses as they
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`become known during this litigation:
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`FAILURE TO STATE A CLAIM
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`1.
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`The First Amended Complaint fails to state a claim upon which relief may be
`
`granted.
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`NON-INFRINGEMENT
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`2.
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`Sonos has not directly or indirectly infringed, and does not directly or indirectly
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`infringe, any valid and enforceable claim of the ‘791 or ‘252 Patent (collectively, the “Patents-in-
`
`Suit”), either literally or under the doctrine of equivalents.
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`INVALIDITY
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`3.
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`The claims of the Patents-in-Suit are invalid for failing to meet the requirements
`
`of one or more of the provisions of 35 U.S.C. §§ 102, 103, and/or 112.
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`UNENFORCEABILITY DUE TO INEQUITABLE CONDUCT
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`4.
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`The ‘791 Patent is unenforceable due to inequitable conduct for at least the reason
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`that the applicant of the ‘791 Patent improperly claimed and maintained small entity status.
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`5.
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`35 U.S.C §41(h)(1) provides for the reduction in patent application fees for any
`
`small business concern, and to any independent inventor or nonprofit organization.
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`6.
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`Pursuant to 37 CFR §1.27, an independent inventor, person, or a small business
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`concern cannot claim small entity status unless, among other things, it has not assigned, granted,
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`conveyed, or licensed any rights in a claimed invention to any organization which would not
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`qualify for small entity status as a person, small business concern, or nonprofit organization.
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`7.
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`37 CFR §1.27(h)(1) provides that “[a]ny attempt to fraudulently establish status as
`
`a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted
`
`on the Office.”
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`8.
`
`37 CFR §1.27(h)(2) further provides that “[i]mproperly, and with intent to
`
`deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered
`
`as a fraud practiced or attempted on the Office.”
`
`9.
`
`On December 17, 2002, Mr. Edward Balassanian, through his patent attorney,
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`filed U.S. Patent Application No. 10/322,335 (“the ‘335 Application”), which later issued as the
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`‘791 Patent. Concurrently, Mr. Balassanian, through his patent attorney, claimed small entity
`
`status.
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`10.
`
`On February 3, 2003, Mr. Balassanian purported to assign the ‘335 Application to
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`BeComm Corporation.
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`11.
`
`On information and belief, Mr. Balassanian was the president of BeComm
`
`Corporation at the time of this assignment.
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`12.
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`On September 17, 2004, Mr. Balassanian, as president of BeComm Corporation,
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`represented to the United States Patent and Trademark Office (the “USPTO”) that BeComm
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`Corporation changed its name to Implicit Networks, Inc. (“Implicit Networks”) on August 25,
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`2004.
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`13.
`
`On October 18, 2013, Implicit Networks and Implicit executed an agreement that
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`purported to assign the entire right, title, and interest of Implicit Networks’ patents to Implicit,
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`including the ‘791 Patent. See Ex. A.
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`12
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`Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 13 of 31 PageID #: 335
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`14.
`
`In its First Amended Complaint, Implicit alleges that technology embodying the
`
`purported inventions of the ‘791 Patent – including products based on something called the
`
`“Strings OS product” – has been licensed to others.
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`15.
`
`On information and belief, at least as early as 2000, prior to the filing date of the
`
`‘335 Application, Mr. Balassanian and BeComm Corporation had licensed its “Strings”
`
`technology to Intel Corp. (“Intel”). See Ex. B (“Intel licenses BeComm’s ‘Strings’ technology”).
`
`16.
`
`In fact, on July 30, 2010, Implicit Networks filed a patent infringement lawsuit
`
`against F5 Networks, Inc. in the Northern district of California (“the F5 Suit”). See Ex. C. In its
`
`First Amended Complaint in the F5 Suit, Implicit Networks alleged that “in 2000, Implicit
`
`signed a contract to develop all media processing code for Intel’s web tablet, a device very
`
`similar to Apple’s new iPad” and that “[i]n January 2001, Intel signed a second contract with
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`Implicit, under which Implicit was to build all the software for the Intel equivalent of iTunes.”
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`Id. at ¶¶ 22, 23. In addition, Implicit Networks also included an excerpt of a March 2001 article
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`that mentioned Intel’s integration of BeComm’s Strings technology into Intel’s web tablet. Id. at
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`¶ 29; see also Ex. D (“In order to provide consumers with a rich audio experience on the tablet,
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`Intel has included BeComm’s Strings software. Strings dynamically manages the way audio
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`content is routed, transformed and delivered to the tablet by using the capabilities of a powerful
`
`PC.”).
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`17.
`
`18.
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`Intel was not entitled to claim small entity status at the USPTO in 2001.
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`Because Mr. Balassanian and BeComm Corporation had licensed technology
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`embodying the purported inventions of the ‘335 Application to Intel at least as early as 2001, Mr.
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`Balassanian was not entitled to claim small entity status for the ‘335 Application.
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`19.
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`On information and belief, Mr. Balassanian was aware that he was not entitled to
`
`claim small entity status for the ‘335 Application but nevertheless claimed small entity status in
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`order to pay reduced filing fees.
`
`20.
`
`Accordingly, because Mr. Balassanian and BeComm Corporation had licensed
`
`technology embodying the purported inventions of the ‘335 Application to Intel at least as early
`
`as 2001, Mr. Balassanian’s claim of a small entity status when filing the ‘335 Application is a
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`fraud practiced or attempted on the USPTO pursuant to 37 CFR §1.27(h)(1).
`
`21.
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`Additionally, on information and belief, Mr. Balassanian’s improper claim of
`
`small entity status when filing the ‘335 Application was made with intent to deceive the USPTO,
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`which is considered as a fraud practiced or attempted on the USPTO pursuant to 37 CFR
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`§1.27(h)(2).
`
`22.
`
`37 CFR §1.27(g)(2) also provides that notification of a loss of entitlement to small
`
`entity status must be filed in the application or patent prior to paying the earliest of the issue fee
`
`or any maintenance fee due after the date on which status as a small entity is no longer
`
`appropriate.
`
`23.
`
`On February 25, 2008, the USPTO sent Implicit Networks a Notice of Allowance
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`and Issue Fee Due for the ‘335 Application. The Notice of Allowance indicated that Implicit
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`Networks had claimed small entity status and instructed that, if the small entity status had
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`changed, Implicit Networks was required to pay twice the amount of the fee indicated on the
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`Notice of Allowance.
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`24.
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`For at least the reasons set forth above, Implicit Networks was not entitled to
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`claim small entity status and was not entitled to pay the reduced issue fee as a small entity.
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`14
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`SONOS EXHIBIT 1005
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`Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 15 of 31 PageID #: 337
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`25.
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`A notification of a loss of entitlement to small entity status was not filed with the
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`USPTO prior to Implicit Networks paying the issue fee for the ‘335 Application.
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`26.
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`On May 21, 2008, Implicit Networks improperly paid the reduced issue fee as a
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`small entity instead of paying twice the amount indicated on the Notice of Allowance.
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`27.
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`On information and belief, Implicit Networks was aware that it was not entitled to
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`claim small entity status for the ‘335 Application but nevertheless claimed small entity status in
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`order to pay the reduced issue fee.
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`28.
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`Accordingly, Implicit Networks fraudulently maintained its small entity status by
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`paying the reduced issue fee as a small entity and failing to notify the USPTO of its loss of
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`entitlement to small entity status prior to payment, which is considered as a fraud practiced or
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`attempted on the USPTO pursuant to 37 CFR §1.27(h)(1).
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`29.
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`Additionally, on information and belief, Implicit improperly maintained its small
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`entity status by paying the issue fee as a small entity and failing to notify the USPTO of its loss
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`of entitlement to small entity status with intent to deceive the USPTO, which is considered as a
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`fraud practiced or attempted on the USPTO pursuant to 37 CFR §1.27(h)(2).
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`30.
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`On information and belief, Mr. Balassanian, as the named inventor of the ‘791
`
`Patent, the alleged founder of Implicit and BeComm Corporation (the current and former
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`assignees of the ‘791 Patent), and as an active participant in the prosecution of the ‘335
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`Application, had direct knowledge of Implicit’s improper claim of small entity status. This
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`knowledge, combined with the materiality of Implicit’s improper claim of small entity status,
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`indicates that Mr. Balassanian and Implicit intentionally withheld and misrepresented
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`information about Implicit’s improper claim of small entity status with the intend to deceive the
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`USPTO.
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`15
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`SONOS EXHIBIT 1005
`IPR of U.S. Pat. No. 8,942,252
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`

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`Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 16 of 31 PageID #: 338
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`31.
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`Accordingly, this intentional and deceptive misrepresentation constitutes
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`inequitable conduct that renders the ‘791 Patent unenforceable.
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`COUNTERCLAIMS
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`Without admitting any of the allegations of the Complaint other than those expressly
`
`admitted herein, and without prejudice to Sonos’s right to plead additional counterclaims as the
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`facts of the matter warrant, Sonos hereby asserts these counterclaims against Implicit:
`
`THE PARTIES
`
`1.
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`Sonos is a Delaware corporation with its principal place of business at 614
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`Chapala St., Santa Barbara, California 93101.
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`2.
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`On information and belief, Implicit is a corporation organized and existing under
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`the laws of the state of Texas with its principal place of business in Texas. Further, on information
`
`and belief, Implicit can be served with process by serving its registered agent, Corporation Service
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`Company d/b/a CSC Lawyers Incorporating Service Company, 211 E. 7th Street, Suite 620, Austin,
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`Texas 78701.
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`JURISDICTION AND VENUE
`
`3.
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`This is a civil action arises under the patent laws of the United States, Title 35,
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`United States Code. This Court has jurisdiction under 35 U.S.C. §§ 271, et seq., and 28 U.S.C. §§
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`1331 and 1338.
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`4.
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`At least by filing its First Amended Complaint, Implicit has consented to the
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`personal jurisdiction of this Court.
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`5.
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`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400.
`
`16
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`PAGE 16 OF 76
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`SONOS EXHIBIT 1005
`IPR of U.S. Pat. No. 8,942,252
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`Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 17 of 31 PageID #: 339
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`FACTUAL BACKGROUND
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`6.
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`Sonos is an innovator and industry leader in the field of wireless audio technology
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`and has been selling a line of wireless home audio products for over 10 years. As acknowledged
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`by the media, Sonos reinvented home audio for the digital age with its line of wireless home audio
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`products. See, e.g., Ex. E (“If you’re not familiar with Sonos, this company revolutionized the
`
`home audio world a decade ago. . . .”); Ex. F (“Sonos not only helped to invent the wireless speaker
`
`category, the company also set the bar for performance, ease of use, and flexibility.”).
`
`7.
`
`On March 10, 2017, Implicit filed its Original Complaint [D.I. 1] against Sonos
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`alleging patent infringement of U.S. Patent Nos. 7,391,791 (the “‘791 Patent) and 8,942,252 (the
`
`“‘252 Patent) (collectively, the Patents-in-Suit).
`
`COUNTERCLAIM I
`INVALIDITY OF THE ‘791 PATENT
`
`8.
`
`Sonos repeats, reiterates, and realleges Paragraphs 1-7 of these Counterclaims as if
`
`fully set forth herein.
`
`9.
`
`The pending litigation between Implicit and Sonos establishes an existing and
`
`actual case or controversy between the parties regarding whether the ‘791 Patent is invalid.
`
`10.
`
`The claims of the ‘791 Patent are invalid under 35 U.S.C. §§ 102 and/or 103 in light
`
`of prior art.
`
`11.
`
`Further, the claims of the ‘791 Patent are invalid under 35 U.S.C. § 112 for failing
`
`to comply with one or more of the written description requirement, the enablement requirement,
`
`and the definiteness requirement.
`
`12.
`
`For instance, the claims of the ‘791 Patent are invalid under 35 U.S.C. § 112 for at
`
`least the reason that these claims include several phrases that fail to delineate the scope of the
`
`claimed invention to a person of ordinary skill in the art with reasonable certainty, and are thus
`
`17
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`SONOS EXHIBIT 1005
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`Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 18 of 31 PageID #: 340
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`indefinite, including but not limited to “rendering time,” “time domain differential between the
`
`master rendering time and the slave rendering time,” “adjusting, based on the received indication,
`
`the rendering of the content at the at least one slave device within the slave device time domain
`
`and in proportion to the time domain differential when present to account for variation between
`
`when the master device and the at least one slave device to render content that should be rendered
`
`at the same time,” “adjusting the rendering of the content at the one or more slave devices to
`
`account for a difference in the slave rendering time and the master rendering time calculated based
`
`on the master device time adjusted for a difference in time domains of the one or more slave
`
`devices and the master device,” and “calculating a time domain difference between the master
`
`rendering time of the master device and the slave rendering time of the slave device based on a
`
`master device time adjusted for a difference in time domains of the slave device and the master
`
`device.”
`
`13.
`
`Thus, for at least these reasons, each claim of the ‘791 Patent is invalid for failing
`
`to meet the provisions of one or more of 35 U.S.C. §§ 102, 103, and 112.
`
`14.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Sonos
`
`requests a judgment from the Court that each claim of the ‘791 Patent is invalid for failing to meet
`
`the provisions of one or more of 35 U.S.C. §§ 102, 103, and 112.
`
`COUNTERCLAIM II
`INVALIDITY OF THE ‘252 PATENT
`
`15.
`
`Sonos repeats, reiterates, and realleges Paragraphs 1-14 of these Counterclaims as
`
`if fully set forth herein.
`
`16.
`
`The pending litigation between Implicit and Sonos establishes an existing and
`
`actual case or controversy between the parties regarding whether the ‘252 Patent is invalid.
`
`18
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`PAGE 18 OF 76
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`SONOS EXHIBIT 1005
`IPR of U.S. Pat. No. 8,942,252
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`

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`Case 1:17-cv-00259-LPS Document 39 Filed 01/11/18 Page 19 of 31 PageID #: 341
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`17.
`
`The claims of the ‘252 Patent are invalid under 35 U.S.C. §§ 102 and/or 103 in light
`
`of prior art.
`
`18.
`
`Further, the claims of the ‘252 Patent are invalid under 35 U.S.C. § 112 for failing
`
`to comply with one or more of the written description requirement, the enablement requirement,
`
`and the definiteness requirement.
`
`19.
`
`For instance, the claims of the ‘252 Patent are invalid under 35 U.S.C. § 112 for at
`
`least the reason that the written description of the ‘252 Patent fails to convey with reasonable
`
`clarity to a person of ordinary skill in the art that the inventor had possession of a claimed invention
`
`that involved either “smooth[ing] a rendering time differential,” “determining a smoothed
`
`rendering time differential,” or any other limitation related thereto.
`
`20.
`
`The claims of the ‘252 Patent are also invalid under 35 U.S.C. § 112 because these
`
`claims include several phrases that fail to delineate the scope of the claimed invention to a person
`
`of ordinary skill in the art with reasonable certainty, and are therefore indefinite, including but not
`
`limited to “rendering time,” “master rendering times indicative of statuses of the rendering the first
`
`content stream at the master rendering device at different times,” “smoothing [a] rendering time
`
`differential [via]