Case 3:20-cv-06754-WHA Document 766 Filed 05/22/23 Page 1 of 26
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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
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`SONOS, INC.,
`Plaintiff and Counter-defendant,
`v.
`GOOGLE LLC,
`Defendant and Counter-claimant.
`
`Case No. 3:20-cv-06754-WHA
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`Consolidated with
`Case No. 3:21-cv-07559-WHA
`SONOS, INC.’S OPPOSITION TO
`GOOGLE’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`Judge: Hon. William Alsup
`Courtroom: 12, 19th Floor
`Trial Date: May 8, 2023
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`SONOS’S OPP. TO GOOGLE’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 766 Filed 05/22/23 Page 2 of 26
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`I.
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`INTRODUCTION
`Sonos presented ample evidence to support its claims that Google infringes the asserted
`claims of the ’885 and ’966 patents, including by indirectly and willfully infringing, and to
`support its entitlement to damages. That evidence consisted of, among other things, testimony
`from Google’s own engineer that Google’s accused speaker groups are “saved persistently”—
`directly rebutting Google’s lead non-infringement argument with respect to the ’966 patent that
`the accused products do not “cause storage” of speaker groups. Google also argues that its new
`version does not infringe the ’966 or ’885 patents because the speakers do not continue to operate
`in “standalone” mode, but fact and expert witness testimony—confirmed by product testing and
`source code analysis—showed that the speakers in Google’s “redesign” remain in standalone
`mode and are configured to playback music individually until receiving a launch group message.
`Sonos also established Google did not make any changes to the Google Home app, so its
`argument that it even has a “redesign” for the ’966 patent is wrong. And the evidence shows that
`continuously operating in standalone mode is not even a limitation of the ’966 patent, so for that
`reason too, Google’s noninfringement argument fails. Drawing all reasonable inferences in
`Sonos’s favor, this Court should deny Google’s motion for judgment as a matter of law (JMOL)
`and send the case to the jury.
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`II.
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`LEGAL STANDARD
`The Court must view the evidence in the light most favorable to the non-moving party,
`Reed v. Lieurance, 863 F.3d 1196, 1204 (9th Cir. 2017), and must deny JMOL unless “no
`reasonable juror could find in the non-moving party’s favor.” Torres v. City of Los Angeles,
`548 F.3d 1197, 1205 (9th Cir. 2008).
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`III. ARGUMENT
`A.
`A Reasonable Juror Could Find That Google Directly And Indirectly
`Infringed The ’966 Patent Via Prior Versions Of The Accused Products.
`1.
`Sonos presented sufficient evidence that Google’s prior versions
`directly infringed the ’966 patent.
`Google contends that the ’966 patent requires a computing device “networked with at least
`three zone players that may be added to overlapping zone scenes.” As Sonos has explained, that
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`SONOS’S OPP. TO GOOGLE’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
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`position is not supported by the claim language or Federal Circuit caselaw. E.g., Dkt. 720. Even
`accepting the view that the claims required three speakers networked with a computing device,
`Google disputes only a single element of the ’966 patent (which appears twice) as applied to
`Google’s prior versions of the accused products: whether the accused products “caus[e] storage”
`of the first and second “zone scene[s].” Dkt. 756 (“JMOL”) at 8-12. Google’s arguments either
`ignore testimony from its own witnesses or import requirements into the claims well beyond the
`plain language of the term “causing storage.”
`First, the Court has construed “zone scene” as being a “previously-saved grouping of zone
`players according to a common theme.” Dkt. 762 at 9. As such, claim 1 of the ’885 also requires
`saving zone scenes. And the Court has previously 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 stored and (by implication) the older product versions necessarily infringe the
`limitations in the ’966 patent that call for “causing storage” of the zone scenes.
`Indeed, the evidence introduced at trial shows that a zone scene is created in the Google
`Home app when a user defines the zone scene and then hits the “save” button. 5/11/23 Tr. at
`776:16-777:12. Thereafter, the user can invoke the zone scene which shows that the zone scene
`has been stored within the system. Id. at 777:19-24. It is hard to image how Google can argue—
`in the face of this evidence—that the Google Home app does not cause storage of the zone scene.
`At a minimum, there is enough evidence for the jury to conclude that the Google Home app does
`cause storage.
`At trial, Google seemed to advance the argument that the word “storage” in the ’966
`patent was (in some unspecified way) different from the “saving” required by the definition of
`zone scene and that this difference was encapsulated by the idea that the zone scene must be
`“saved persistently.” JMOL at 9. This argument turns on an (implicit) claim construction for
`which Google has never provided any principled reasoning. Regardless, Google’s own witness
`admitted that Google speaker groups are saved persistently: Mr. MacKay was asked “just to
`clarify, you agree that a speaker group is something that is saved by a user in advance of being
`launched?” Dkt. 755-2 (MacKay 5/10/22) at 11; Ex. 1 at 117:17-19. Mr. MacKay testified:
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`SONOS’S OPP. TO GOOGLE’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 766 Filed 05/22/23 Page 4 of 26
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`“Well, again, the -- the group might never be launched. Like you might never cast to the group.
`So it’s -- I would characterize it as -- a static group is something that the user configures and it’s
`saved persistently.” Dkt. 755-2 (MacKay 5/10/22) at 11; Ex. 1 at 117:20-24 (emphasis added).1
`Google tries to read in its “persistent” requirement by quoting Dr. Almeroth, arguing that
`he “acknowledged that unlike dynamic groups, zone scenes are persistently stored for at least a
`period of time,” quoting a portion of Dr. Almeroth’s report stating that “the user created groups
`that are predefined and pre-saved as part of the zone scenes are persistent.” JMOL at 9 (emphasis
`added). But Dr. Almeroth made clear that he was not using the term “persistent” to “describe
`what the claim requirement is,” and that “[t]he paragraphs that you read from in the report that
`use that term were describing the [Sonos] system not in the context of the claim.” 5/11/23 Tr. at
`901:21-902:3 (emphasis added). And, indeed, the Court knows that the zone scene is saved
`persistently because (as Google’s witnesses admitted) after it is created the zone scene can be
`invoked hours, days, or weeks later. See 5/16/23 Tr. at 1278:15-25 (Mr. MacKay testifying that
`as long as the group leader has been elected first and as long as one of the devices are online, then
`after a new static speaker group has been created and saved, the user can launch that group
`whenever they desire—whether an hour, two days, or three weeks later).
`Moreover, the jury heard from Dr. Almeroth and saw Google’s internal technical
`document describing that “the group configuration is updated and stored in the prefs file on the
`device.” TX6453 at p. 1 (emphasis added). Dr. Almeroth testified regarding TX6453, which is
`“an internal Google document that starts to describe some of the detailed functionality for how
`the speaker group setup is to work.” 5/11/23 Tr. at 784:23-785:2. See also TX6453. As Dr.
`Almeroth explained, TX6453 shows “the mechanism for how groups are set up,” “us[ing]
`
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`1 For avoidance of doubt, Mr. Mackay’s testimony was referring to static groups. See, e.g., Dkt.
`755-2 (MacKay 5/10/22) at 3-4; Ex. 1 at 57:4-8, 57:10 (Q: “What is a ‘speaker group’ as Google
`uses that term? A: I would describe it as a set of devices that appears as a castable – as a Cast
`target. And when casted to, they all play together – specifically – specifically audio.”); Dkt. 755-
`2 (MacKay 5/10/22) at 4; Ex. 1 at 63:1-8 (Q: “What is a ‘static group’? A: So that is a group that
`the user defines using the Google Home app, I think, is the only way. So they define a group, and
`then that group becomes a castable target.”); Dkt. 755-2 (MacKay 5/10/22) at 4-5; Ex. 1 at 63:9-
`11, 63:13-16, 63:19 (Q “And how does a ‘static group’ compare to what is referred to as a
`‘speaker group’ in Exhibit 36? A: Let me go back. So a ‘static group’ is what is being referred to
`in -- in this document, ‘Create and manage speaker groups,’ I think. … Yeah, that’s accurate.”).
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`SONOS’S OPP. TO GOOGLE’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`CASE NO. 3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 766 Filed 05/22/23 Page 5 of 26
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`something called cast V2 commands.” 5/11/23 Tr. at 785:15-18. See also TX6453 at p. 1. As
`TX6453 shows, “[i]t allows the Google Cast app to configure groups” and “[i]n this case the
`Google Cast app would be the Google Home app that’s running on the phone.” 5/11/23 Tr. at
`785:18-20. See also TX6453. TX6453 says that “[w]henever one of these commands arrives, the
`group configuration is updated and stored in the prefs file on the device.” Id. at p. 1; 5/11/23 Tr.
`at 785:20-23. Dr. Almeroth contextualized this statement, explaining “[s]o here what it’s talking
`about is the group creation … that happens as a result via the user interface, selecting the
`speakers, grouping them together, and pressing ‘save.’” 5/11/23 Tr. at 785:24-786:2. As Dr.
`Almeroth further explained, “[t]here is a message that’s sent to the player, and it stores the group
`configuration information in the prefs file on the device,” which “gets more into the specific steps
`beyond just the user interface of what happens when you create a group, and then the messages
`that get sent between the controller and the smart speakers.” Id. at 786:3-9.
`Google’s next argument is that the claims of the ’966 patent require causing the storage of
`“group membership information.” JMOL at 10. Again, the claims do not require storage of
`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 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
`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. United States 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. Mr. Mackay testified that the
`group leader “stores information about the followers that are currently connected to it.” Dkt. 755-
`2 (MacKay 5/10/22) at 8; Ex. 1 at 95:14-20.
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`SONOS’S OPP. TO GOOGLE’S MOTION FOR
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`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.” 5/11/23 Tr. at 789:21-25. And there is no dispute that the accused Google
`products allow for later invocation—something that necessarily requires storage. See 5/16/23 Tr.
`at 1278:15-25 (Mr. MacKay testifying that as long as the group leader has been elected first and
`as long as one of the devices are online, then after a new static speaker group has been created
`and saved, the user can launch that group whenever they desire—whether an hour, two days, or
`three weeks later). For these reasons too, a reasonable jury could reject Google’s implausible
`arguments that it does not store grouping information for later invocation or play, cf. JMOL at 10.
`Mr. Mackay provided additional testimony about how the Google Home App instructs
`speakers to save groups. He testified that the Home App sends a “MultizoneJoin_Group”
`message to the speakers, and that message contains “an identifier for the group” and the group
`name. 5/16/23 Tr.1243:3-1244:8; JMOL at 11 (admitting same). See also 5/18/23 Tr. 1642:8-
`1643:17 (Almeroth rebuttal testimony). This is exactly the “program instruction[]” that causes
`storage of the zone scene. JMOL at 11.
`Google also argues that it does not infringe the ’966 patent because the saving of speaker
`groups occurs only on the speakers, and not on the Google Home app. JMOL at 10, 11-12. But
`the independent claim does not require that the storage of the zone scene occur in any specific
`memory or location. And as discussed above, the Home App sends the “MultizoneJoin_Group”
`message, which causes the speakers to save group information. That satisfies the claims—
`including dependent claim 4 (requiring storage on the zone player).
`Google also asserts that it does not directly infringe the ’966 patent because “Google does
`not make or sell a computing device with the Google Home app installed or networked with at
`least three zone players.” JMOL at 8 (capitalization and quotation marks omitted). Of course,
`“make” and “sell” are not the only actions that give rise to liability under 35 U.S.C. § 271(a); one
`who “uses” the accused instrumentality will be liable as a direct infringer. 35 U.S.C. § 271(a).
`Ample evidence shows that Google employees “use[d]” the Google Home App (such as through
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`JUDGMENT AS A MATTER OF LAW
`CASE NO. 3:20-CV-06754-WHA
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`internal testing) once it was installed on a computing device, including to form speaker groups.
`Therefore, Google is a direct infringer.
`For example, Mr. Mackay explained that Google uses “testing,” including “set[ting] up
`the group in a specific way to test in specific scenarios.” 5/16/23 Tr. at 1244:12-16. See also,
`e.g., Dkt. 755-2 (MacKay 5/10/2022) at 18; Ex. 1 at 255:25-256:10, 256:12 (“[I]s one of the
`things that that manual QA team does is test the speaker group functionality of those Nest
`devices?” A: “Yes.”). Similarly, Mr. Maclellan testified that he worked on “debugging, testing,
`making sure that it all works appropriately.” 5/16/23 Tr at 1299:6-17. And while the specific
`testing that Mr. Maclellan described took place in in 2015, the jury also heard Mr. Pedro testify
`that he conducted testing by installing the Google Home App on computing devices during the
`period between October 2020 to June 2022. Dkt. 755-2 (Pedro) at 2-3; Ex. 6 at 16:2-10, 17:18-
`20, 17:23-:24, 18:24-19:3, 19:6-11, 19:14 (“Q. Do you recall when -- what time frame you were
`on the Google Home app team? . . . A. Early October 2020 to late June 2022 . . . Q. Did you
`perform any testing related to the Google Home app yourself while you were on the Google
`Home app team? [A] I would say I did perform some testing. . . . [Q.] And so do I understand
`correctly that for that kind of testing that -- that you engaged in, you would have installed a
`Google Home app on [an] end user device in order to conduct that testing? [A.] Yes. Q. And then
`once -- with that Google Home app installed on -- on it, on an end user device, would you then
`have launched and run the Google Home app on that end user device during your testing? [A.]
`Yes.”), id. at 207:24-208:1, 208:4, 208:9-11, 208:14-16, 210:5-9, 210:19-21, 210:24-25 (“[Q]
`Can you tell me in what capacity you would have used the Google Home app to create speaker
`groups? [A.] I would have created speaker groups, A, to test issues as I needed to triage them.
`And B, on -- as personal use. Q. And then with respect to your personal use, I think you
`mentioned there are -- have been times where you’ve used the Google Home app to create a
`group? A. Yes. Q. Okay. And -- and once you created that all speakers group, did you then play
`music on that all speakers group, Mr. Pedro? [A.] I may have to test it out, to see if it
`worked.”).Google’s counsel elicited testimony from Dr. Almeroth confirming that typically, “you
`would want to do testing” of a product both before releasing it, as well as after releasing it.
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`JUDGMENT AS A MATTER OF LAW
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`5/12/23 Tr. at 990:23-991:2 (“Q: Makes sense, right, because you would want to test a product
`before you release it? After you release it, you want to test it to see if there are any bugs or if
`there’s opportunities for improvement? Do you agree? A: Yes, you would want to do testing.”).
`See also, e.g., 5/11/23 Tr. at 769:22-770:2 (“Q. And, Dr. Almeroth, have you also seen any
`evidence that Google internally tests all the versions of its Google Home app before releasing
`them? A. Yes. Testing – there’s evidence of testing and obviously testing these functions before
`they’re released into the marketed is absolutely critical.”). Because “[d]irect infringement can be
`proven by circumstantial evidence,” and a “finding of infringement can rest on as little as one
`instance of [infringement] during the pertinent time period,” Toshiba Corp. v. Imation Corp., 681
`F.3d 1358, 1364 (Fed. Cir. 2012), a reasonable jury could find that Google tested both the prior
`and new versions of the accused products after the patents issued. (And Google obviously tested
`the redesign after both patents issued, as explained below.)
`Thus, the Court should deny Google’s motion for JMOL as to the prior versions’ direct
`infringement—or grant JMOL of infringement as explained in Sonos’s motion (Dkt. 754).
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`2.
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`Sonos presented sufficient evidence that Google indirectly infringed
`the ’966 patent through the prior versions of its accused products.
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`As explained above, Sonos provided more than sufficient evidence of acts of direct
`infringement by third parties. The jury heard evidence that 29% of households who have
`speakers have three or more speakers, 5/12/23 Tr. at 1132:1-4, Ex. 7, PDX3.41 (citing TX6920),
`which Google did not rebut. See also 5/16/23 Tr. 1203:12-16 (Q. And the number of people who
`own three or more Google speakers is something less than this 14 million number; correct? A.
`[By Mr. Malackowski] We don’t know the precise number but, yes, we would presume it’s less
`than that.”). The jury also heard evidence that “58 percent of survey respondents were either very
`likely or extremely likely to purchase a bundle of three smart speakers.” 5/17/23 Tr. at 1599:1-7
`(“Google’s own document from November of 2019, the same month of the hypothetical
`negotiation of the ’966, reports that 58 percent of survey respondents were either very likely or
`extremely likely to purchase a bundle of three smart speakers; correct? A. [By Mr. Bakewell]
`Yes, you did that. I did the math too. I think that’s right.”); see also TX158. Under the Court’s
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`construction, once a computing device installed with the Home App is networked to three or more
`speakers, that system “necessarily infringes the patent in suit” because the Home App has all
`required functionality. ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313 (Fed.
`Cir. 2007). Contrary to Google’s arguments (JMOL 16), because the asserted claims are directed
`to capability and not actual use or performance, actual execution of software functionality is not
`required. See Finjan, 626 F.3d at 1204; Tex. Advanced Optoelectronic Solutions; 895 F.3d at
`1327. Infringement occurs as soon as the software component is downloaded to and/or installed
`on the computing device, or when the computing device is networked with three or more
`speakers.
`Induced infringement further requires that Google: (1) “took certain affirmative acts to
`bring about the commission by others of acts of infringement”; and (2) “had ‘knowledge that the
`induced acts constitute[d] patent infringement.’” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1286
`(Fed. Cir. 2020) (quoting Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 765-66 (2011)).
`Contributory infringement requires that: (1) Google had “knowledge of the [’966 patent],” (2)
`Google had “knowledge of patent infringement,” and (3) the prior versions of Google’s accused
`products were not common components suitable for non-infringing use. Commil USA, LLC v.
`Cisco Sys., Inc., 575 U.S. 632, 639 (2015). Willful blindness can satisfy the knowledge
`requirement for both forms of indirect infringement. Warsaw Orthopedic, Inc. v. NuVasive, Inc.,
`824 F.3d 1344, 1347 (Fed. Cir. 2016). Willful blindness develops when the defendant
`“subjectively believe[s] that there is a high probability that a fact exists” and “take[s] deliberate
`actions to avoid learning of that fact.” Glob.-Tech, 563 U.S. at 769.
`Sonos presented evidence that Google took active steps to induce infringement. Google
`encourages—and in fact, requires—people to install the Home App on their computing devices to
`set up and to operate Google’s speakers. And Google encourages people to use the accused
`functionality to create speaker groups.
`Google’s senior product engineer Christopher Chan testified, for example, that “[w]hen
`setting up a smart speaker, there is a quick-start guide in the packaging that instructs users to set
`up and download the Google Home app. And then in addition to that, when they plug in a
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`JUDGMENT AS A MATTER OF LAW
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`speaker, the Google assistant’s voice also instructs users to download the Google Home app.”
`Dkt. 755-2 (Chan) at 9-10, Ex. 2 at 90:16-18, 90:22-91:2; see also, e.g., Dkt. 755-2 (Chan) at 10,
`Ex. 2 at 91:15-16, 91:19-21. Mr. Chan also confirmed that users are required to have “[a]ccess to
`the Home app” in order “to set up a Google smart speaker” and that “[t]he Google Home app is
`required to create a static speaker group.” Dkt. 755-2 (Chan) at 10, Ex. 2 at 91:3-5, 91:8-9,
`91:10-11, 91:13-14. Tomer Shekel, a Google product manager for “the Google Home product,”
`and “multi-room speaker playback” also confirmed that “you needed to have the Google Home
`app” in order to set up speaker groups. Dkt. 755-2 (Shekel) at 2, 6; Ex. 3 at 7:11-14, 14:7-13,
`16:8-12, 16:18-22, 140:3-4, 140:7-15. See also, e.g., 5/11/23 Tr. at 769:6-21 (Dr. Almeroth
`noting that Mr. Shekel “provided testimony as the former product manager for the Google Home
`app that you needed that Google Home app installed on a device to basically use those devices.”).
`Mr. Chan also testified that Google provides instructions to customers on how to create
`multizone groups of two or more speakers, 5/17/23 Tr. at 1530:7-10, including through a blog
`post that he wrote in approximately October 2019. Id. at 1531:7-20. That blog post encourages
`users to “set up a speaker group in the Home app,” among other things. TX6353 at p. 1. The
`Google help pages also discuss setting up speaker groups. TX0036; see also TX6698 (video
`showing creation of speaker group). Google contends that “Sonos has not presented any evidence
`that these materials ever reached alleged direct infringers as the documents were not distributed
`with the accused products,” JMOL at 19, but any user who bought three or more accused speakers
`would be required to use the Google Home app to set up the speaker groups, and a reasonable
`jury could find that a user of Google speakers and the Google Home app would necessarily turn
`to Google’s own support resources in order to set up the groups.
`Similarly, the jury heard testimony and saw evidence sufficient to establish contributory
`infringement. The jury heard evidence sufficient to find that the Google Home app—and the
`specific accused programming within it—is a material component of infringing devices and is not
`a staple article or commodity of commerce suitable for substantial non-infringing use. The only
`possible use of the Home App’s grouping feature is to be installed and run on infringing
`computing devices. As the Federal Circuit explained in Lucent Technologies, a software seller
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`JUDGMENT AS A MATTER OF LAW
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`can be liable for contributory infringement even if the software includes noninfringing features or
`tools within the infringing software. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1320-
`21 (Fed. Cir. 2009). Instead, the “particular tool” or “feature” within the software is what must be
`analyzed for to determine if it is “suitable only for an infringing use.” Id. As in Lucent, there is
`no noninfringing use of the accused feature.
`Google also had notice of the ’966 patent and knowledge that its acts were causing
`infringement of the ’966 patent. Sonos’s general counsel, Alaina Kwasizur, testified that Sonos
`provided notice to Google of the ’966 patent on September 28, 2020, in an email “from me to
`some folks at Google, including Mr. [Tim] Kowalski, … on September 28th notifying them that
`we would be filing a complaint alleging infringement of the ’966 patent on the next day.”
`5/12/23 Tr. at 1025:6-20; see also id. at 1041:6-13; TX6130.
`Sonos provided Google with detailed, element by element, analysis of how Google’s
`products infringe the ’966 patent. TX6136 ¶¶ 70-73, 117-129. As the Court instructed the jury,
`this draft complaint is “proof that notice of what Sonos was alleging was given one day prior to
`the lawsuit.” 5/12/23 Tr. at 1044:5-13. See also id. at 1051:13-16 (“The only reason I’m
`allowing this document into evidence is to show that Google was at least aware of the patents in
`suit by -- at the time they filed this lawsuit.”); id. at 1051:23 (“it goes to the issue of notice of the
`patents”).
`Ms. Kwasizur explained to the jury that “[t]his is a claim chart which is laying out the
`claims of the ’966 patent and how they’re infringed by the Google products.” 5/12/23 Tr. at
`1044:22-1045:1. Ms. Kwasizur told the jury that this claim chart formed a part of the draft
`complaint that Sonos sent to Google on September 28, 2020, explaining “[o]n the left you can see
`sort of the elements of the claim mapped out, and then on the right you can see what Sonos was
`purporting to be the evidence of the infringement.” Id. at 1045:2-7; see also TX6136 ¶¶ 70-73,
`117-129.
`Google thus undisputedly received notice of infringement of the ’966 patent on September
`28, 2020—and Google also filed the declaratory judgment action that kicked off this case on that
`same day. Dkt. 1; TX8240. Under Rule 11, by presenting its declaratory judgment complaint to
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`the Court, Google’s counsel represented that the factual contentions contained therein had
`evidentiary support, to the best of the person’s knowledge, information, and belief, formed after
`an inquiry reasonable under the circumstances. Fed. R. Civ. P. 11(b). In order to comply with
`Rule 11, this inquiry would have taken weeks, if not months. 5/11/23 Tr. at 720:1-10 (“There’s a
`thing called Rule 11 of the Federal Rules of Civil Procedure. I can read it to you here, but it says
`this: You can’t file a lawsuit, you cannot file a lawsuit in federal court unless you are certifying
`that you -- you have read it and there is a good faith basis for everything in there. Now, it takes
`weeks -- it would take weeks of work for Google to have analyzed those products in those patents
`in order to decide -- to be able to be in a position to say ‘We don’t infringe or they’re invalid.’”).2
`The jury also heard from Google’s in-house Senior Counsel Timothy Kowalski. The jury
`first heard generally about Mr. Kowalski’s knowledge of Sonos, before hearing more specifically
`from Mr. Kowalski regarding Google’s receipt of Sonos’s claim charts for the ’966 patent. More
`generally, Mr. Kowalski testified that he has used Sonos products since 2015/2016, and testified
`that Sonos and Google were competitors in the “premium speaker market at one point in time.”
`Dkt. 755-2 (Kowalski) at 2-4; Ex. 4 at 18:14-15, 18:20-23, 19:4-6, 59:19-22, 59:24-60:2, 60:4-11,
`60:13-16. Mr. Kowalski was asked whether Google has ever tracked Sonos’s patents, whether
`Google has ever done any searches for Sonos patents, whether Google ever attempted to locate
`family members of Sonos patents, and whether Google made an effort to learn when Sonos filed
`new patents, and in response to each question declined to answer on grounds of privilege. Dkt.
`755-2 (Kowalski) at 4-5; Ex. 4 at 65:9, 65:16-17, 66:5-6, 66:9-11, 66:13-14, 66:17-22, 66:25,
`67:1. Mr. Kowalski acknowledged that Google’s declaratory judgment complaint in this case was
`filed on September 28, 2020, and signed by Google attorneys, “seeking a declaratory judgment of
`noninfringement of the ’966 patent.” Dkt. 755-2 (Kowalski) at 5-6; Ex. 4 at 86:23-24, 87:4-5,
`87:7-10, 87:13-15, 87:17-88:3, 88:12-19, 89:8-10, 89:12-14.
`Google contends that its “declaratory judgment complaint demonstrates that it had a good-
`faith belief that it did not infringe.” JMOL at 13. That contention is belied by Google’s frivolous
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`2 Google’s argument that its action sought only declarations of non-infringement, not invalidity, is
`beside the point. JMOL at 15 n.10. As the Court made clear, the non-infringement a