Late last month, the Federal Circuit released its opinion in Google LLC v. Sonos, Inc., a patent case we have been following because it attracted five amicus briefs. In this case, the Federal Circuit reviewed a judgment of the Northern District of California holding several patent claims invalid and two patents unenforceable based on prosecution laches. The panel, consisting of Federal Circuit Judges Lourie and Prost and District of New Jersey Chief Judge Renée Bumb, reversed in part and affirmed in part. This is our opinion summary.
The opinion, authored by Judge Lourie, began by providing the relevant background:
Sonos owns the ‘966 and ‘885 patents (collectively, ‘the Zone Scene patents’) [U.S. Patent Nos. 10,469,966 and 10,848,885], and the ‘033 patent (‘the Direct Control parent’) [ U.S. patent 10,799,033], which are all generally directed to controlling various aspects of media playback systems. . . . The Zone Scene patents are directed to creating and saving predefined groups of ‘zone players,’ e.g., speakers, into so- called ‘zone scenes’ to play synchronous audio. The Zone Scene patents were each filed in April 2019 and claim priority from a September 2006 application and a September 2007 nonprovisional appplication. . . . In August 2019, during prosecution of the Zone Scene patents, Sonos amended the specification’s description of Figure 5B, depicting a user interface with a list of the available zones that can be grouped to form a zone scene, to add the following: ‘The list of zones in the user interface 520 includes ALL the zones in the system, including the zones that are already grouped.’ The issues raised in this appeal with respect to the Zone Scene patents relate to their disclosure of the ‘overlapping’ nature of the claimed zone scenes. . . . The Direct Control patent is directed to the use of a ‘control device,’ e.g., a smartphone, to transfer playback responsibility to a ‘playback device,’ e.g., a speaker, through a mobile app. The speaker is then responsible for playing the selected media (e.g., a music playlist), while features of that playback, such as the volume or song selection, can be controlled by the smartphone. . . . The issues on appeal with respect to the Direct Control patent relate to the claimed ‘remote playback queue’ and the so-called ‘device picker’ limitation, i.e., the recited ‘displaying a representation of one or more playback devices’ and ‘receiving user input indicating a selection of the at least one given playback device.’ . . . Early in the proceedings, Sonos moved for summary judgment of infringement of claim 1 of the ’885 patent, J.A. 4545–73, and Google cross-moved for summary judgment of noninfringement of that claim, J.A. 4883–87. . . . The district court granted summary judgment of infringement to Sonos and denied Google’s cross-motion. . . . In addressing Google’s written description arguments, the district court specifically relied upon Figure 5B of the ’885 patent and its accompanying disclosure that the list of available zones ‘includes ALL the zones in the system, including the zones that are already grouped.’ . . . During trial, the district court began to question the soundness of its prior rejection of Google’s written description challenge . . . In its post-trial decision, the district court held the Zone Scene patents unenforceable due to prosecution laches. . . . Despite that conclusion, the court proceeded to take a ‘deeper dive’ into other issues, including whether the Zone Scene patents’ 2006 and 2007 priority applications contained sufficient written description to support the claimed overlapping zone scenes or whether Sonos’s 2019 amendment to include additional disclosure directed to that feature constituted new matter. Ultimately, the court found that the amendment was new matter that was not supported by the disclosure in the original specification . . . The district court therefore held the asserted claims invalid as ‘anticipated by the accused products themselves,’ and vacated the portion of its earlier summary judgment decision that addressed written description.
Judge Lourie began the court’s discussion by explaining how “Sonos raises three challenges on appeal.” First, he said, “it argues that the district court erred in granting judgment of invalidity of the Zone Scene patents.” Second, he continued, “it argues that the district court abused its discretion in holding the Zone Scene patents unenforceable due to prosecution laches.” And third, he said, “it argues that the district court erred in granting summary judgment of invalidity of the Direct Control patent.” He then addressed each issue presented in the appeal.
With respect to the first issue, the invalidity of the Zone Scene patents, Judge Lourie addressed “two procedural irregularities of the district court’s decision that impact the . . . analysis.” He clarified that the Federal Circuit “will treat the district court’s judgment as one arising under [35 U.S.C] § 112, not § 102,” and will “construe the district court’s post-trial decision as a sua sponte summary judgment decision under Rule 56(f) . . . holding that the Zone Scene patents are invalid for lack of written description.”
Shifting to whether the written description requirement is met, Judge Lourie explained that the court “consider[s] ‘whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.'” He pointed to disclosure describing “a ‘Morning Scene’ containing each of the Bedroom, Den, and Dining Room, as well as an ‘Evening Scene’ containing those same rooms, in addition to the Garage and Garden.” He concluded that this disclosure “plainly provides adequate written description for overlapping zone scenes, where each of the Bedroom, Den, and Dining Room simultaneously belong to two different zone scenes.” In the process, he rejected Google’s argument that the disclosure depicts “alternative embodiments.”
Next, Judge Lourie reviewed the second issue, prosecution laches with respect to the Zone Scene patents. Judge Lourie explained that, “[t]o succeed in its defense [of prosecution laches], Google must establish that Sonos’s delay in prosecution was unreasonable and inexcusable under the totality of the circumstances, and that Google suffered prejudice attributable to that delay.” The court limited its analysis to the second element, prejudice, because the court concluded as a matter of law that Google did not establish it. Judge Lourie explained that, “[t]o prove prejudice, Google ‘must show evidence of intervening rights rights,’ i.e., that either Google or others ‘invested in, worked on, or used the claimed technology during the period of the delay.'” He emphasized that “Google cannot be prejudiced by incorporating into its products a feature that was publicly disclosed in a patent application prior to its investment.” Judge Lourie ultimately concluded that “Google presents no evidence that it suffered prejudice.” He said the “district court erred in concluding otherwise, and therefore abused its discretion in holding the Zone Scene patents unenforceable for prosecution laches.”
Finally, Judge Lourie turned “to the district court’s grant of summary judgment that the asserted claims of the Direct Control patent are invalid as obvious.” He quoted disclosure in a prior art patent that, “[i]n some examples, the user may also utilize the remote control application . . . to select one of more previously paired controlled devices.” He emphasized “that the only reasonable interpretation of that disclosure is that the remote-control application” of the prior art “allows a user to select a device from a list of previously paired controlled devices for pairing.” As a result, Judge Lourie rejected Sonos’s contention that there existed “genuine disputes of material fact as to whether the combination of those references would have rendered obvious the claimed ‘remote playback queue’ and ‘device picker’ limitations.” He concluded that “Sonos’s attempt to create a genuine dispute of material fact . . . is unpersuasive.”
As a result of the Judge Lourie’s analysis, the Federal Circuit reversed the district court’s judgment that claims of two patents are invalid, reversed the judgment that two patents are unenforceable, and affirmed the judgment that certain claims are invalid.