Case: 23-1259 Document: 39 Page: 1 Filed: 05/23/2024
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GOOGLE LLC,
`Appellant
`
`v.
`
`SONOS, INC.,
`Appellee
`______________________
`
`2023-1259
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2021-
`00964.
`
`______________________
`
`Decided: May 23, 2024
`______________________
`
`DANIEL C. TUCKER, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Reston, VA, argued for appellant.
`Also represented by ERIKA ARNER, KELLY HORN, Washing-
`ton, DC; CORY C. BELL, Boston, MA.
`
` ELIZABETH MOULTON, Orrick, Herrington & Sutcliffe
`LLP, San Francisco, CA, argued for appellee. Also repre-
`sented by ALYSSA MARGARET CARIDIS, Los Angeles, CA;
`MARK S. DAVIES, Washington, DC; PARTH SAGDEO, Boston,
`MA; EMILY VILLANO, New York, NY.
`
`

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`Case: 23-1259 Document: 39 Page: 2 Filed: 05/23/2024
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`2
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`GOOGLE LLC v. SONOS, INC.
`
`______________________
`
`Before LOURIE, PROST, and STARK, Circuit Judges.
`PROST, Circuit Judge.
`Google LLC (“Google”) appeals a Patent Trial and Ap-
`peal Board (“Board”) final written decision concluding that
`claims 1‒5, 7‒12, 14‒16, 18, and 20 of U.S. Patent No.
`10,229,586 (“the ’586 patent”) are unpatentable. Sonos,
`Inc. v. Google LLC, No. IPR2021-00964, 2022 WL 5265117
`(P.T.A.B. Oct. 6, 2022) (“Decision”). For the reasons below,
`we affirm.
`
`BACKGROUND
`Sonos, Inc. (“Sonos”) filed a petition for inter partes re-
`view of the ’586 patent, including review of claims 3, 4, 11,
`12, and 20 (the “delay-value claims”). The ’586 patent “re-
`lates to a wireless sensor unit system providing bi-direc-
`tional communication between a sensor . . . and a repeater
`or base unit.” ’586 patent col. 1 ll. 38‒41. In an embodi-
`ment with more than one repeater, there is a “possibility
`that two repeaters . . . could try to forward packets for the
`same sensor unit” at the same time, causing messages to
`collide and become corrupted or garbled. Id. at col. 11
`ll. 34‒36. To “reduc[e] the chance of packet collisions,” a
`“delay period is programmed into each repeater.” Id. at
`col. 11 ll. 38‒42.
`Sonos presented three grounds of unpatentability in its
`petition: (1) obviousness in view of Baker1 and Bruckert,2
`(2) obviousness in view of Baker, Bruckert, and McMillin,3
`
`
`1 U.S. Patent App. Pub. No. 2006/0120433 (“Baker”);
`J.A. 1225‒52.
`2 European Patent App. No. 0416732 (“Bruckert”).
`3 U.S. Patent No.
`7,027,773
`(“McMillin”);
`J.A. 2195‒2259.
`
`

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`Case: 23-1259 Document: 39 Page: 3 Filed: 05/23/2024
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`GOOGLE LLC v. SONOS, INC.
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`3
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`and (3) obviousness in view of Marman4 and Shoemake.5
`J.A. 134. Relevant to this appeal are grounds 2 and 3.
`With respect to ground 2, the Board determined that
`claims 2‒4, 7, 10‒12, 16, 18, and 20 would have been obvi-
`ous. Decision, 2022 WL 5265117, at *10–11. With respect
`to ground 3, the Board determined that claims 1, 2, 4, 5,
`7‒12, 14‒16, 18, and 20 would have been obvious but that
`claim 3 was not shown to have been obvious. Id. at *12–
`17.
`
`In its petition, Sonos argued that a person of ordinary
`skill in the art (“POSITA”) would have been motivated to
`combine McMillin’s collision-avoidance techniques with
`Baker’s network configuration to reduce “the risk of mes-
`sage collision, garbling, and corruption.” J.A. 183‒85. In
`response, Google argued that Sonos failed to provide an
`“explanation for why a POSITA would have combined the
`particular feature of McMillin with the hypothetical
`Baker/Bruckert combination.” J.A. 335 (emphasis in orig-
`inal). Google did not dispute that the network in Baker is
`subject to the same collision problem that McMillin ad-
`dresses, that McMillin teaches using delays to avoid mes-
`sage collision, or that a POSITA would have understood
`McMillin’s collision-avoidance techniques could improve
`Baker’s system. Compare J.A. 183‒85, with J.A. 335‒37.
`The Board found that Sonos and its expert had shown a
`close similarity between Baker and McMillin and ad-
`vantages for combining these references that demonstrated
`why a POSITA would have been motivated to combine the
`references. Decision, 2022 WL 5265117, at *10–11. The
`Board then concluded that the delay-value claims would
`have been obvious over Baker, Bruckert, and McMillin.
`
`
`4 PCT App. No. WO 00/21053
`J.A. 1306‒69.
`5 U.S. Patent App. Pub. No. 2002/0122413 (“Shoe-
`make”).
`
`(“Marman”);
`
`

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`Case: 23-1259 Document: 39 Page: 4 Filed: 05/23/2024
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`GOOGLE LLC v. SONOS, INC.
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`Google timely appealed. We have jurisdiction under 28
`U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`Google appeals the Board’s determination of obvious-
`ness in grounds 2 and 3 with respect to the delay-value
`claims. First, Google argues that substantial evidence does
`not support the Board’s finding that a POSITA would have
`been motivated to combine Baker and Bruckert with
`McMillin for claims 3, 4, 11, 12, and 20. Second, Google
`argues that the Board erred in determining that claims 4,
`11, 12, and 20 would have been obvious over Marman and
`Shoemake because the Board’s determination that claim 3
`was not shown to have been obvious required a determina-
`tion that the “substantively identical” delay-value claims
`were also nonobvious. Appellant’s Br. 28. We address each
`argument in turn.
`
`I
`Whether a POSITA would have been motivated to com-
`bine prior-art references is a factual question that we re-
`view for substantial evidence. Intel Corp. v. PACT XPP
`Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Sub-
`stantial evidence is such relevant evidence as a reasonable
`mind might accept as adequate to support a conclusion.”
`Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324
`(Fed. Cir. 2017) (cleaned up).
`Google argues that substantial evidence does not sup-
`port the Board’s finding that a POSITA would have been
`motivated to combine Baker and Bruckert with McMillin
`because Sonos’s motivation to combine is too generic and
`“untethered to the specific language of the delay value
`claims.” Appellant’s Br. 22. In Google’s view, motivations
`to combine must be articulated on a claim-by-claim basis.
`Oral Arg. at 1:55‒3:44, No. 23-1259, https://oralargu-
`ments.cafc.uscourts.gov/default.aspx?fl=23-1259_0506202
`4.mp3. We disagree.
`
`

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`Case: 23-1259 Document: 39 Page: 5 Filed: 05/23/2024
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`GOOGLE LLC v. SONOS, INC.
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`Google’s argument that Sonos’s motivation to combine
`is too generic is not supported by the teachings of KSR.
`KSR rejected “rigid rule[s] that limit[] the obviousness in-
`quiry” in favor of “an expansive and flexible approach” to
`obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 415, 419 (2007). “[T]he analysis need not seek
`out precise teachings directed to the specific subject matter
`of the challenged claim . . . .” Id. at 418. A motivation-to-
`combine “rationale is not inherently suspect merely be-
`cause it’s generic in the sense of having broad applicability
`or appeal.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797
`(Fed. Cir. 2021). Rather, “generic” or “conclusory” analysis
`is insufficient when it bears “‘no relation to any specific
`combination of prior art elements . . . from specific refer-
`ences’ and [does]n’t explain why a skilled artisan would
`have combined them ‘in the way the claimed invention
`does.’” Id. (emphasis in original) (quoting ActiveVideo Net-
`works, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328
`(Fed. Cir. 2012)).
`For example, in ActiveVideo, the purported motivations
`to combine were wholly generic and divorced from any spe-
`cific reason why a POSITA would be motivated to make the
`proposed combination of prior-art references. There, the
`expert merely alleged that a POSITA would have been mo-
`tivated to combine prior-art references “to build something
`better,” to make a system “more efficient, cheaper, or . . .
`ha[ve] more features,” to be “more attractive to your cus-
`tomers,” and to “do something new.” ActiveVideo, 694 F.3d
`at 1328. Unlike ActiveVideo, Sonos and its expert “indi-
`cated precisely how and why a skilled artisan would have
`combined the references.” Intel, 21 F.4th at 797. Sonos
`proposed how to combine Baker’s network with McMillin’s
`collision-avoidance techniques, and there is no dispute that
`Baker and McMillin disclose each of the elements of the
`delay-value claims. Appellant’s Br. 24‒26; J.A. 335‒37.
`Sonos further explained why a POSITA would have been
`motivated
`to
`combine known
`collision-avoidance
`
`

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`Case: 23-1259 Document: 39 Page: 6 Filed: 05/23/2024
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`GOOGLE LLC v. SONOS, INC.
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`techniques from McMillin with Baker’s network—i.e., be-
`cause it would reduce “the risk of message collision, gar-
`bling, and corruption.” J.A. 184 (citing J.A. 1157 ¶ 391).
`Google also argues that Sonos’s proposed motivation is
`conclusory, invoking the notion that “knowledge of a prob-
`lem and motivation to solve it are entirely different from
`motivation to combine particular references to reach the
`particular claimed method.” Innogenetics, N.V. v. Abbott
`Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008); see also Appel-
`lant’s Br. 24. In Innogenetics, we concluded that expert tes-
`timony that “merely list[ed] a number of prior art
`references and then conclude[d] with the stock phrase ‘to
`one skilled in the art it would have been obvious to perform
`the [claims]’” was insufficient to support a determination
`of obviousness. 512 F.3d at 1373. We have distinguished
`the facts of Innogenetics, which involved wholly conclusory
`motivations to combine, from motivations providing more
`than mere listings of the prior art and conclusions of obvi-
`ousness. See Meyer Intell. Props., Ltd. v. Bodum, Inc., 690
`F.3d 1354, 1375 (Fed. Cir. 2012) (finding expert report not
`conclusory where “one skilled in the art would have been
`motivated based on familiarity with the prior art” and
`“common sense”); Norgren Inc. v. ITC, 699 F.3d 1317, 1327
`(Fed. Cir. 2012) (“[T]he Commission properly found the
`claims obvious based on evidence of known problems and
`an obvious solution.”). Indeed, KSR stated that “[o]ne of
`the ways in which a patent’s subject matter can be proved
`obvious is by noting that there existed at the time of inven-
`tion a known problem for which there was an obvious solu-
`tion encompassed by the patent’s claims.” 550 U.S. at
`419–20. The motivations to combine here are unlike those
`in Innogenetics. Not only was there knowledge of the prob-
`lem and motivation to solve it, but Sonos and its expert ex-
`plained that Baker and McMillin have similar network
`structures, that both networks (absent collision-avoidance
`techniques) would suffer from the same problem, and that
`
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`Case: 23-1259 Document: 39 Page: 7 Filed: 05/23/2024
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`GOOGLE LLC v. SONOS, INC.
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`McMillin disclosed solutions to the collision problems.
`J.A. 183–85; J.A. 1156‒57 ¶¶ 383‒90.
`Google further argues that motivations to combine
`must be presented on a claim-by-claim basis. We have
`never mandated that such a rigid motivation-to-combine
`analysis is necessary in every case. “[T]he law has always
`evaluated the motivation to combine elements based on the
`combination of prior art references that together disclose all
`of the elements of the invention.” Gen. Elec. Co. v. Ray-
`theon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020)
`(emphasis in original). There is no need to establish a mo-
`tivation to combine on a claim-by-claim basis when the pro-
`posed motivation logically applies to all of the claims at
`issue, as Sonos’s proposed motivation for the delay-value
`claims does here. See J.A. 183‒85 (applying the same mo-
`tivation to combine to all the delay-value claims). In this
`context, the Board’s findings are supported by substantial
`evidence. Decision, 2022 WL 5265117, at *10–11 (citing
`J.A. 1156‒57 ¶¶ 383‒90).
`The Board’s finding of a motivation to combine Baker
`and Bruckert with McMillin is supported by substantial ev-
`idence. We thus affirm the Board’s determination that the
`delay-value claims would have been obvious over Baker,
`Bruckert, and McMillin.
`
`II
`Google also appealed the Board’s determination that
`claims 4, 11, 12, and 20 are unpatentable in view of Mar-
`man and Shoemake. Because we affirm the Board’s deter-
`mination of unpatentability on these same claims in view
`of Baker, Bruckert, and McMillin, we do not consider
`Google’s arguments regarding Marman and Shoemake.
`CONCLUSION
`We have considered Google’s remaining arguments and
`find them unpersuasive. For the foregoing reasons, we
`
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`GOOGLE LLC v. SONOS, INC.
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`affirm the Board’s determination that claims 3, 4, 11, 12,
`and 20 are unpatentable.
`AFFIRMED
`
`