Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 1 of 9
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`CLEMENT SETH ROBERTS (STATE BAR NO. 209203)
`croberts@orrick.com
`BAS DE BLANK (STATE BAR NO. 191487)
`basdeblank@orrick.com
`ALYSSA CARIDIS (STATE BAR NO. 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
`Related to Case No. 3:21-cv-07559-WHA
`SONOS, INC.’S MOTION IN LIMINE
`NO. 3 TO EXCLUDE INVALIDITY
`BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT
`FOR THE ’885 AND ’966 PATENTS
`Judge: Hon. William Alsup
`Pretrial Conf.: May 3, 2023
`Time: 12:00 p.m.
`Courtroom: 12, 19th Floor
`Trial Date: May 8, 2023
`
`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
`
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 2 of 9
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`NOTICE OF MOTION
`TO ALL PARTIES AND THEIR ATTORNEYS:
`PLEASE TAKE NOTICE that on May 3, 2023 at 12:00 p.m., or as soon thereafter as may
`be heard before the Honorable Judge William H. Alsup, in Courtroom 12 on the 19th Floor of the
`United States District Court for the Northern District of California, San Francisco Courthouse,
`450 Golden Gate Avenue, San Francisco, CA 94102, Sonos, Inc. (“Sonos”) will, and hereby does,
`move this Court to preclude argument, evidence, or references that the ’885 and ’966 patents are
`invalid for lack of written description or enablement under 35 U.S.C. § 112. This motion is based
`on this Notice of Motion and Motion, the accompanying Memorandum of Points and Authorities,
`the Declaration of Joseph R. Kolker (“Kolker Decl.”), all exhibits filed herewith, all documents in
`the Court’s file, and such other written or oral evidence and argument as may be presented at or
`before the time this motion is heard by the Court.
`STATEMENT OF THE RELIEF REQUESTED
`Sonos requests that this Court exclude any argument, evidence, or references that the ’885
`and ’966 patents are invalid for lack of written description or enablement.
`
`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 3 of 9
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`I.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`INTRODUCTION
`Google should not be permitted to present evidence or argument that the ’885 and ’966
`patents are invalid for lack of enablement or written description. The Court granted summary
`judgment on Google’s written description challenge to the ’885 patent. Google did not provide
`any expert opinion that the ’966 patent—which has the same specification as the ’885 patent and
`the same relevant claim language—is invalid for lack of written description. Together with the
`prior summary judgment ruling, Google therefore has no basis for presenting a written description
`challenge to the ’966 patent at trial. Meanwhile, Google has provided no expert opinion that
`either patent is invalid for lack of enablement. Accordingly, at trial, Google should be precluded
`from making any argument, introducing any evidence, or making any references whether the ’885
`and ’966 patents meet the written description and enablement requirements of § 112, including
`any argument that if the ’885 and ’966 patents are enabled, the prior art must be as well.
`
`II.
`
`STATEMENT OF RELEVANT FACTS
`Sonos asserts that Google directly and indirectly infringes two patents: U.S. Patent No.
`10,848,885 (“the ’885 patent”) and U.S. Patent No. 10,469,966 (“the ’966 patent”). The ’885 and
`’966 patents are referred to as the “Zone Scenes” patents. They share the same specification and
`both claim aspects of Sonos’s zone scenes technology.
`As relevant here, at the showdown summary judgment stage, the Court concluded that
`certain Google products infringe the ’885 patent, and the Court rejected Google’s written
`description challenge to the ’885 patent. Dkt. 309 at 14-17.
`At the very early stages of this case, Google asserted § 112-based invalidity claims with
`respect to both the ’966 and ’885 patents. See Kolker Decl. Ex. A at 18-21, 25-28. Google
`contended that both the ’966 and ’885 patent claims “may fail to satisfy the requirements of §112,
`¶ 1 because the specification and original patent application fail to provide an enabling disclosure
`of and written description support for” certain claim limitations and terms. Id. at 19-20, 26.
`At the showdown summary judgment stage, Google moved for summary judgment of
`
`1
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`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 4 of 9
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`invalidity of claim 1 of the ’885 patent, contending that the patent’s “claimed set of operations”
`lacked written description support. Dkt. 247-3 at 18-25.
`The Court considered and rejected Google’s argument. First, the Court rejected Google’s
`specific argument “that the specification ‘never discloses that a zone player may be added to two
`zone scenes at the same time,’” noting that Figure 5B of the specification and other disclosures in
`the specification “adequately convey that a zone player can be added to multiple zone scenes.”
`Dkt. 309 at 14-15. Second, the Court rejected Google’s contention “that the specification does
`not provide support for the zone player ‘continuing to operate in the standalone mode until a
`given one of the first and second zone scenes has been selected for invocation’ and ‘transitioning
`from operating in the standalone mode to operating in accordance with the given one of the first
`and second predefined groupings of zone players.’” Id. at 15. The Court noted that while
`“Google repeatedly points out [that] the specification never expressly refers to the term
`‘standalone mode,’” “the specification does not have to use the term verbatim to provide
`sufficient disclosure,” and it “does so here.” Id. at 16-17.
`With Google’s leading § 112 argument removed from play, Google stopped pursuing
`written description or enablement challenges to the ’885 or ’966 patents. Google’s remaining
`invalidity challenges to these zone scene patents are all laid out in the opening expert report of
`Google’s technical expert, Dr. Schonfeld. See Kolker Decl. Ex. B at i-ix. Dr. Schonfeld contends
`that both patents are invalid based on alleged prior art, but offers no opinion on any written
`description or enablement challenges. Id. And Google’s pending motion for summary judgment,
`like Dr. Schonfeld’s invalidity report, asserts only prior art-based invalidity claims with respect to
`the ’885 and ’966 patents. See Dkt. 483 at i-ii.
`As relevant here, Google contends that the combination of the Sonos 2005 system and
`Sonos Forum posts render the asserted claims of the ’885 and ’966 patents obvious. See id. at 18-
`20. In opposition, Sonos explains, among other things, that nothing in these asserted references
`teach “a person of ordinary skill in the art how to implement the claimed ‘zone scene’
`technology,” and the “Sonos Forum posts express a mere hope that Sonos would one day invent
`
`2
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`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 5 of 9
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`technology that allowed users to have ‘virtual zones,’ without providing any direction, guidance,
`or working examples of how to carry out the invention.” Dkt. 508 at 18. For these as well as
`other reasons, Sonos explains that Google’s asserted prior art fails to teach the challenged claim
`limitations and also fails to enable the claimed invention. See id. at 17-18.
`In the face of Sonos’s proffered evidence showing lack of enablement by the prior art,
`Google pivoted, and argued that the patent claims are pitched at the same level of generality as
`the prior art, which was somehow a flaw in Sonos’s response to Google’s invalidity arguments:
`Sonos argues that the combination of the Sonos Forums and Sonos 2005 system
`would not “enable a skilled artisan to make and use the claimed invention” because
`they do not teach “critical details” such as the “programming” for how the speakers
`would interact with a controller, how the speakers would operate, and how they
`would be commanded to play back music.[] Opp. at 17-18. But, critically, the patent
`claims also do not recite any of these “details” or “programming.”
`Dkt. 538 at 10. At oral argument, Google leaned into this position, defending its “obviousness
`case” by pointing the Court back to its prior “ruling on written description,” Ex. C at 60:9-14, in
`which the Court held that that the specification underlying the ’885 patent provided adequate
`written description support for claim 1 of that patent, Dkt. 309 at 14-17. Summarizing Google’s
`argument, the Court asked:
`But on that last point, I’m asking this question. If the specification, itself, does not
`elaborate on how to save [speaker groups], can we take that under the case -- does
`the case law say we can take that as an admission against interest to the patentholder
`that anybody skilled in the art would know how to do it?
`Ex. C at 66:19-24. Counsel for Google responded “[y]es, Your Honor,” and contended that
`support for this proposition could be found in “the KSR case.” Id. at 66:25-67:4.
`Google similarly defended its obviousness case—and its contention that the prior art is
`enabling—by arguing the specification underlying the ’885 patent lacks explicit references to the
`claimed “indication” that a speaker has been added to a speaker group: “Just like with saving,
`Your Honor, you can look through the entire patent, and you won’t even see any algorithms or
`any specific messages on this indication. The only time the word ‘indication’ ever shows up is in
`
`3
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`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 6 of 9
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`the patent claim.” Id. at 76:5-9 (emphasis added).1 As Sonos noted, Google was improperly
`comparing the specification and the prior art, when the proper comparison is “what is in the
`claims” of the asserted patents against the prior art. Id. at 76:12-15.
`
`III.
`
`ARGUMENT
`Because Google has no remaining claims for invalidity of the ’885 or ’966 patents based
`on any alleged lack of adequate written description or enablement, Google should be precluded at
`trial from making any argument, introducing any evidence, or making any references to written
`description or enablement challenges for the ’885 and ’966 patents, including any argument that if
`the ’885 and ’966 patents are enabled, the prior art must be as well.
`
`Google Should Be Precluded From Raising Undisclosed Invalidity Defenses
`A.
`Because Google’s expert opinion regarding written description was rejected during the
`showdown, and because Google has not offered any expert opinion in support of written
`description or enablement invalidity claims with respect to the ’885 and ’966 patents for the
`upcoming trial, Google should be precluded from making any argument or reference to alleged
`lack of written description support or enablement of the asserted claims of the ’885 and ’966
`patents. See, e.g., Goodman v. Staples The Office Superstore, LLC, 644 F.3d 817, 827 (9th Cir.
`2011) (Rule 37 “forbid[s] the use at trial of any information that is not properly disclosed.”). Dr.
`Schonfeld’s expert report regarding the alleged invalidity of the ’885 and ’966 patents makes no
`mention of such theories, so the Court should “preclud[e] him from testifying on this issue.”
`Nationwide Transp. Fin. v. Cass Info. Sys., Inc., 523 F.3d 1051, 1062 (9th Cir. 2008). As this
`Court requires, “at trial, the direct testimony of experts will be limited to the matters disclosed in
`their reports.” Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases Before the
`Honorable William Alsup ¶ 15.
`Accordingly, Google should be precluded from offering any opinion on whether the
`asserted claims of the ’885 or ’966 patents have insufficient disclosure in the specification.
`
`1 See, e.g., Kolker Decl. Ex. C at 83:1-3 (“And again, we didn’t hear anything from counsel about
`any additional disclosure [by the specification] of saving. No disclosure [by the specification] of
`how to send indications.”).
`
`4
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`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 7 of 9
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`B.
`
`Google Should Be Precluded From Arguing Or Suggesting That The Alleged
`Prior Art Is Enabled Through Comparisons To The ’885 or ’966 Patents, Or
`Vice Versa.
`As explained above, Google is asserting prior-art based invalidity arguments against the
`’885 and ’966 patents. As part of that argument, Google contends that the prior art’s disclosure is
`co-extensive with the shared specification of the ’885 and ’966 patents. So, according to Google,
`if the ’885 and ’966 patents meet the requirements of § 112, so too must its prior art combination
`be enabled. Google’s argument lacks merit and is highly likely to confuse the jury.
`First, there is no support for Google’s argument that it can show the prior art is enabled by
`comparing the prior art to the disclosure in the patent. When asked whether “the case law say[s]
`we can take that as an admission against interest to the patentholder that anybody skilled in the art
`would know how to do it?,” Ex. C at 66:19-67:4, Google pointed the Court to a passage in KSR
`discussing an “obvious to try” scenario for showing motivation to combine:
`Third, the court erred in concluding that a patent claim cannot be proved obvious
`merely by showing that the combination of elements was obvious to try. When there
`is a design need or market pressure to solve a problem and there are a finite number
`of identified, predictable solutions, a person of ordinary skill in the art has good
`reason to pursue the known options within his or her technical grasp. If this leads to
`the anticipated success, it is likely the product not of innovation but of ordinary skill
`and common sense.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007); Ex. C at 83:4-22 (quoting same).
`The Supreme Court said nothing about using the specification’s purported lack of
`disclosure to show that the prior art was enabling. Nor would such a comparison make any sense.
`Enablement requires looking to the disclosure at issue—not comparing and contrasting the
`challenged disclosure to some other document. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc.,
`481 F.3d 1371, 1378 (Fed. Cir. 2007) (“We have stated that the ‘enablement requirement is
`satisfied when one skilled in the art, after reading the specification, could practice the claimed
`invention without undue experimentation.’” (emphasis added) (citation omitted)). The ’885
`patent’s specification simply cannot be used to show that the prior art is enabling, nor would there
`be any problem with a fact-finder determining that the prior art was not enabling but the ’885
`patent was enabling. First, the Sonos Forums prior art consists of a few paragraphs of hopeful
`
`5
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`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 8 of 9
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`wishes by users. The ’885 patent’s specification, in contrast, contains 11 columns of detailed
`description of the invention and 6 figures illustrating the invention. It would be entirely
`consistent to reach different conclusions based on those different disclosures.
`Second, it is Google’s burden to show invalidity by clear and convincing evidence. For
`example, in this case, it would be Google’s burden to show lack of written description support or
`lack of enablement of the ’885 and ’966 patents by clear and convincing evidence, and it is also
`Google’s burden to show obviousness by clear and convincing evidence. 35 U.S.C. § 282(a).
`And Google cannot establish obviousness unless the claimed prior art would enable the claimed
`invention. See Raytheon Techs. Corp. v. Gen. Elec. Co., 993 F.3d 1374, 1376-77, 1379-82 (Fed.
`Cir. 2021); Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d 1294, 1303 (Fed. Cir.
`2010); Minn. Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1306 (Fed. Cir. 2002). Google
`could quite easily fail to meet that burden as to both obviousness and enablement (assuming any
`enablement issue was even on the table here). So Google’s suggestion that if it loses on
`enablement, it has to win on obviousness is logically flawed. Because Google is wrong on the
`law, its “comparison” evidence lacks any relevance and should be excluded under Rule 401.
`Third, Google should be precluded from making any reference to written description or
`enablement in the context of the ’885 or ’966 patents because any “probative value is
`substantially outweighed by a danger of” “unfair prejudice, confusing the issues, misleading the
`jury, undue delay, [or] wasting time.” Fed. R. Evid. 403. If Google injects § 112 arguments
`against the ’885 and ’966 patents, the jury may be confused and wrongly conclude that § 112
`challenges are on the table and that they should decide or consider those issues in the context of
`infringement or validity. A curative jury instruction would be necessary, but not sufficient, and
`Sonos would be forced to spend limited trial time establishing to the jury something that has
`already been established in this litigation: that claim 1 of the ’885 patent has adequate written
`description support, and that because Google does not contend that the asserted claims of the ’885
`and ’966 patents otherwise lack written description support or enablement, the presumption of
`validity means that the jury cannot consider whether either patent is invalid on these bases.
`
`6
`
`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 596 Filed 04/25/23 Page 9 of 9
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`IV.
`
`CONCLUSION
`For the foregoing reasons, the Court should grant Sonos, Inc.’s Motion in Limine to
`preclude any argument, evidence, or references to alleged § 112 bases for invalidity of the ’885
`and ’966 patents, including any argument that if the ’885 and ’966 patents are enabled, the prior
`art must be as well.
`
`Dated: April 13, 2023
`
`ORRICK HERRINGTON & SUTCLIFFE LLP
`and
`LEE SULLIVAN SHEA & SMITH LLP
`
`By: /s/ Clement Seth Robers
`Clement Seth Roberts
`
`Attorneys for Sonos, Inc.
`
`7
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`SONOS, INC.’S MOTION IN LIMINE NO. 3 TO
`EXCLUDE INVALIDITY BASED ON LACK OF WRITTEN
`DESCRIPTION OR ENABLEMENT FOR THE
`’885 AND ’966 PATENTS
`CASE NO. 3:20-CV-06754-WHA
`
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