Judge tosses Sonos's $32.5M patent win over Google with savage slam down

'It is wrong that our system was used to punish an innovator and to enrich a pretender'

A California judge has quashed one of Sonos's legal victories against Google – and the $32.5 million royalty payout that came along with it – declaring Sonos's patents at the heart of the matter were the unenforceable work of a "pretender" attempting to "punish an innovator … by delay and sleight of hand."

Judge William Alsup's order [PDF] invalidating the two patents at issue vacates a jury verdict from May of this year. The jury had found Google had infringed one of the patents, which concerned managing groups of smart speakers in a multi-room space.

Essentially, in this particular case, Sonos said the ability to group together Google Nest and Home smart speakers in your house or apartment – specifically, allowing gear to belong to more than one speaker group – infringed its intellectual property, and it demanded royalties. Sonos is also known for its multi-room speaker kit.

Unfortunately for Sonos, Alsup, a federal district judge in San Francisco, concluded after some investigation by himself that the two patents – 10,848,885 and 10,469,966 – in question were unenforceable based on a doctrine known as "prosecution laches." The rarely used laches defense is applicable when there is an unreasonable and unexplained delay in patent prosecution despite opportunities to do so earlier.

The patents in suit stem from an application made way back in 2006, Alsup explained, "but [Sonos] did not file the applications for these patents and present the asserted claims for examination until 2019." Sonos linking its 2019 patents (used to challenge Google in court) to that earlier 2006 application was spurious, the judge concluded, and was done only to claim a prior date before Google's allegedly infringing products came to market in 2015. 

In essence, Alsup decided, Sonos was trying to punish Google retroactively by reaching into the past and connecting patent filings made over a decade apart. 

"This was not a case of an inventor leading the industry to something new. This was a case of the industry leading with something new and, only then, an inventor coming out of the woodwork to say that he had come up with the idea first – wringing fresh claims to read on a competitor's products from an ancient application," Alsup lamented. 

Naturally, Sonos disagreed with Alsup's decision. A spokesperson told The Register that Alsup was wrong "on both the facts and the law," and said it would appeal. 

"While an unfortunate result, it does not change the fact that Google is a serial infringer of our patent portfolio, as the International Trade Commission has already ruled with respect to five other patents," Sonos alleged to us. "In the end, we expect this to be a temporary setback in our efforts to hold Google financially accountable for misappropriating Sonos's patented inventions." 

A bit of a setback

Halima DeLaine Prado, general counsel for Google, described the decision as indicative of the weakness of Sonos's claims and its "years-long, misleading campaign … on spurious patent grounds." While Sonos has more wins under its belt in the pair's ongoing feud than Google does, Alsup's decision could have wide-ranging implications for the other cases still open between the speaker maker and the Chocolate Factory. 

The International Trade Commission decided in early 2022 that Google had infringed on five Sonos patents – all different from this latest case – leading to a partial import ban on infringing Chocolate Factory products. 

The ITC again ruled on the Google-Sonos issue last month, tossing several patent infringement claims made by Google in August because it either failed to prove infringement, or because Sonos successfully argued the claims were invalid. 

Sonos and Google have been involved in back-and-forth litigation since 2020 after a brief consideration of partnership in 2013, and several cases between the two are still open – including a pair filed in August by Google that rely on some of the same patents dismissed by the ITC last month.

Whether future decisions of patent law will come down in favor of Google or Sonos is unclear, and Alsup's decision further complicates the picture.

Regardless of who stands to win later, Prado took the opportunity of her victory blog post to argue for reform of the patent system for implementing new technologies, dedicating more time to examining complex patents, and requiring applicants to better explain their claims.  

Alsup is likely to agree with the need for some guardrails, as he concluded that Sonos's laches were an abuse of the patent system.

"It is wrong that our patent system was used in this way," Alsup wrote in his conclusion. "With its constitutional underpinnings, this system is intended to promote and protect innovation. Here, by contrast, it was used to punish an innovator and to enrich a pretender by delay and sleight of hand."

Meanwhile, Google has signaled it will very soon issue software updates to its Nest displays, speakers, and Chromecast so that they can once again join more than one speaker group. It removed this functionality after getting drawn into the above legal fight with Sonos. ®

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