NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GOOGLE LLC,
`Plaintiff-Appellee
`
`v.
`
`SONOS, INC.,
`Defendant-Appellant
`______________________
`
`2024-1097
`______________________
`
`Appeal from the United States District Court for the
`Northern District of California in Nos. 3:20 -cv-06754-
`WHA, 3:21-cv-07559-WHA, Judge William H. Alsup.
`______________________
`
`Decided: August 28, 2025
`______________________
`
`DAN L. BAGATELL, Perkins Coie LLP, Hanover, NH, ar-
`gued for plaintiff -appellee. Also represented by A NDREW
`DUFRESNE, Madison, WI; NATHAN K. KELLEY, Washington,
`DC; TARA LAUREN KURTIS, Chicago, IL ; MELISSA J. BAILY,
`IMAN LORDGOOEI, SEAN S. PAK, Quinn Emanuel Urquhart
`& Sullivan, LLP, San Francisco, CA.
`
` E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe
`LLP, New York, NY, argued for defendant-appellant. Also
`represented by J OSEPH RAYMOND KOLKER; ALYSSA
`Case: 24-1097 Document: 103 Page: 1 Filed: 08/28/2025
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`GOOGLE LLC v. SONOS, INC. 2
`MARGARET CARIDIS, NICHOLAS GONZALEZ, Los Angeles, CA;
`ELIZABETH MOULTON, CLEMENT ROBERTS, SACHI
`SCHURICHT, San Francisco, CA; L AUREN WEBER, Seattle,
`WA; GEORGE I. LEE, COLE BRADLEY RICHTER, RORY PATRICK
`SHEA, JOHN DAN SMITH, III, SEAN MICHAEL SULLIVAN, Lee
`Sullivan Shea & Smith LLP, Chicago, IL.
` ______________________
`
`Before LOURIE and PROST, Circuit Judges, and BUMB,
`Chief District Judge.1
`LOURIE, Circuit Judge.
`Sonos, Inc. appeals from the final judgment of the U.S.
`District Court for the Northern District of California hold-
`ing (1) claims 1, 2, 4, 6, and 8 of U.S. Patent 10,469,966
`(“the ’966 patent”) invalid and the ’966 patent unenforcea-
`ble; (2) claim 1 of U.S. Patent 10,848,885 (“the ’885 patent”)
`invalid and the ’885 patent unenforceable; and (3) claims 1,
`2, 4, 9, 11–13, and 16 of U.S. Patent 10,779,033 (“the ’033
`patent”) invalid.2 J.A. 107–08 (Amended Final Judgment).
`For the following reasons, we reverse -in-part and af-
`firm-in-part.
`
`1 Honorable Renée M arie Bumb, Chief Judge ,
`United States District Court for the District of New Jersey,
`sitting by designation.
`2 Sonos further appeals the district court’s judgment
`holding claim 13 of U.S. Patent 9,967,615 invalid. We have
`since affirmed the invalidity of that claim in a separate de-
`cision, see Sonos, Inc. v. Google LLC , No. 2023-2040,
`2025 WL 1703730 (Fed. Cir. June 18, 2025), so Sonos’s ap-
`peal as to that claim is moot. See ECF No. 99.
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`GOOGLE LLC v. SONOS, INC. 3
`BACKGROUND
`I
`Sonos owns the ’966 and ’885 patents (collectively, “the
`Zone Scene patents”), and the ’033 patent (“the Direct Con-
`trol patent”), which are all generally directed to controlling
`various aspects of media playback systems.
`A. The Zone Scene Patents
`The Zone Scene patents are directed to creating and
`saving predefined groups of “zone player s,” e.g., speakers,
`into so-called “zone scenes” to play synchronous audio. See
`’885 patent, col. 2 ll. 36–45.3 The Zone Scene patents were
`each filed in April 2019 and claim priority from a Septem-
`ber 2006 provisional application and a September 2007
`nonprovisional application. Id. col. 1 ll. 17–24.
`Independent claim 1 of the ’885 patent, which is repre-
`sentative of the asserted claims of the Zone Scene patents,
`reads:
`1. A first zone player comprising:
`a network interface . . . ;
`one or more processors;
`a non-transitory computer-readable medium; and
`program instructions . . . that, when executed by
`the one or more processors, ca use the first zone
`player to perform functions comprising:
`while operating . . . in a networked media
`playback system comprising the first zone
`player and at least two other zone players;
`
`3 Citations to the Zone Scene patents are made with
`reference to the ’885 patent, which shares a specification
`with the ’966 patent.
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`GOOGLE LLC v. SONOS, INC. 4
`(i) receiving . . . a first indication that the
`first zone player has been added to a
`first zone scene comprising a first prede-
`fined grouping of zone players including
`the first zone player and a second zone
`player . . . ; and
`(ii) receiving . . . a second indication that
`the first zone player has been added to a
`second zone scene comprising a second
`predefined grouping of zone players in-
`cluding at least the first zone player and
`a third zone player . . . wherein the sec-
`ond zone player is different than the
`third zone player . . . .
`Id. col. 11 l. 37 –col. 12 l. 22 (emphases added). In short,
`the claims recite the creation of “overlapping” zone scenes
`in which any given speaker —the claimed “first zone
`player”—can simultaneously belong to two different zone
`scenes.
`In August 2019, d uring prosecution of the Zone Scene
`patents, Sonos amended the specification’s description of
`Figure 5B, depicting a user interface with a list of the avail-
`able 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. ” Id. col. 10 ll. 15–17; see
`J.A. 8685. 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.
`B. The Direct Control Patent
`The Direct Control paten t 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. See ’033 patent, col. 2 ll. 20–29. The
`speaker is then responsible for playing the selected media
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`GOOGLE LLC v. SONOS, INC. 5
`(e.g., a music playlist), while features of that playback,
`such as the volume or song selection, can be controlled by
`the smartphone.
`Independent claim 1, which is representative of the as-
`serted claims of the Direct Control patent, reads:
`1. A computing device comprising:
`at least one processor;
`a non-transitory computer-readable medium; and
`program instructions . . . that, when executed by
`the at least one processor, cause the computing de-
`vice to perform functions comprising:
`operating in a first mode in which the com-
`puting device is configured for playback of
`a remote playback queue provided by a
`cloud-based computing system associated
`with a cloud-based media service;
`while operative in the first mode, display-
`ing a representation of one or more play-
`back devices in a playback system . . . ;
`while displaying the representation of the
`one or more playback devices, receiving
`user input indicating a selection of at least
`one given playback device . . . ;
`based on receiving the user input, trans-
`mitting an instruction for the at least one
`given playback device to take over respon-
`sibility for playback of the remote playback
`queue from the computing device . . . .
`Id. col. 17 l l. 32–56 (emphases added). The issues on ap-
`peal 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 represen-
`tation of one or more playback devices” and “receiving user
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`GOOGLE LLC v. SONOS, INC. 6
`input indicating a selection of the at least one given play-
`back device.”
`II
`Google LLC sued Sonos for declaratory judgment of
`noninfringement in the U.S. District Court for the North-
`ern District of California. One day later, Sonos sued Google
`for infringement in the U.S. District Court for the Western
`District of Texas. A panel of this court granted Google’s
`petition for a writ of mandamus and directed the Texas
`court to transfer Sonos’s case . T he cases were thereafter
`consolidated in the California court. See In re Google LLC,
`No. 2021-170, 2021 WL 4427899, at *1 (Fed. Cir. Se pt. 27,
`2021).
`A
`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 judg-
`ment of noninfringement of that claim, J.A. 4883–87. I n
`opposition to Sonos’s motion, Google argued, inter alia ,
`that there could be no infringement of claim 1 because that
`claim lacked adequate written description of overlapping
`zone scenes . J.A. 4913–20. But Google did not inde-
`pendently move for summary judgment of invalidity of that
`claim or even argue in its own cross-motion that the inva-
`lidity of the claim precluded infringement.
`The district court granted summary judgment of in-
`fringement to Sonos and denied Google’s cross-motion. See
`Google LLC v. Sonos, Inc. , No. 20 -cv-6754, 2022 WL
`2870527, at *9 (N.D. Cal. July 21, 2022) (“Zone Scene Deci-
`sion”). In addressing Google’s written description argu-
`ments, 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 sys-
`tem, including the zones that are already grouped .” Id. at
`*8 (quoting ’885 patent, col. 10 ll. 16–17). Thus, the district
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`GOOGLE LLC v. SONOS, INC. 7
`court noted that the Zone Scene patents “adequately con-
`vey that a zone player can be added to multiple zone
`scenes.” Id. Thereafter, Google abandoned its written de-
`scription challenges to the Zone Scene patents. J.A. 6993.
`As the case neared trial, Google moved for summary
`judgment of invalidity of the Direct Control patent .
`J.A. 6325–39. Google argued that a version of Google’s own
`YouTube Remote (“YTR2”), in view of its patent directed to
`that remote, U.S. Patent 9 ,490,998 (“the ’998 patent”),
`would have rendered obvious the asserted claims of the Di-
`rect Control patent at the time of the alleged invention .
`The district court agreed and granted Google’s motion, re-
`moving the Direct Control patent from the scope of the
`trial. Sonos, Inc. v. Google LLC, No. 20-cv-6754, 2023 WL
`2962400 (N.D. Cal. Apr. 13, 2023) (“Direct Control Deci-
`sion”).
`The case proceeded to trial on Google’s alleged infringe-
`ment of the asserted claims of the Zone Scene patents, as
`well as on the validity of those claims and damages. The
`jury found that Google had failed to prove that any of the
`asserted claims are invalid, that Google’s redesign product
`4
`infringes claim 1 of the ’885 patent, and that none of the
`accused products infringes the asserted claims of the ’966
`patent. J.A. 10347–49. The jury awarded Sono s just over
`$32.5 million for Google’s infringement. J.A. 10350.
`B
`During trial, the district court began to question the
`soundness of its prior rejection of Google’s written descrip-
`tion challenge to the overlapping zone scenes as claimed in
`the Zone Scene patents and ordered additional briefing.
`
`4 After the district court’s grant of summary judg-
`ment of infringement of claim 1 of the ’885 patent , Google
`developed a redesign product that it claimed no longer in-
`fringed the Zone Scene patents. See J.A. 6344–48.
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`GOOGLE LLC v. SONOS, INC. 8
`See J.A. 20660–62. The court deferred its ruling on that
`issue until after trial , when it also held a hearing on the
`parties’ post-trial motions and Google’s affirmative equita-
`ble defenses.
`In its post -trial decision, the district court held the
`Zone Scene patents unenforceable due to prosecution
`laches. See Sonos, Inc. v. Google LLC , No. 20 -cv-6754,
`2023 WL 6542320, at *30 (N.D. Cal. Oct. 6, 2023) (“ Post-
`Trial Decision ”). It found that Google had shown that
`Sonos “was guilty of unreasonable and inexcusable delay in
`its prosecution of” the Zone Scene pat ents because Sonos
`filed the provisional application from which th ose patents
`claim priority in September 2006, but did not seek to claim
`overlapping zone scenes until thirteen years later, in April
`2019. Id. at *16. The court therefore determined that
`“[t]he magnitude of [ Sonos’s] delay in presenting [its]
`claims for prosecution suffice[d] to invoke prosecution
`laches.” Id. at *17 (second and third alteration in original)
`(quoting Hyatt v. Hirshfeld, 998 F.3d 1347, 1367 (Fed. Cir.
`2021)). T he court further determined that Google had
`shown that it suffered prejudice as a result of Sonos’s delay,
`explaining that “Google began investing in the accused
`products by at least 2015, when it released its first prod-
`ucts that practiced the invention.” Id. at *18. According to
`the court, “[t]here [was] no question that Google worked on,
`invested in, and used the claimed technology during the pe-
`riod of Sonos’s delay.” Id. The court therefore held the
`Zone Scene patents unenforceable against Google.
`Despite that conclusion, the court proceeded to take a
`“deeper dive” into other issues, id. at *19, 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. See id. at
`*20–30. Ultimately, the court found that the amendment
`was new matter that was not supported by the disclosure
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`GOOGLE LLC v. SONOS, INC. 9
`in the original specification , such that the Zone Scene pa-
`tents had a priority date of August 23, 2019, the date of the
`amendment to the specification . Id. at *27. The district
`court therefore held the asserted claims invalid as “antici-
`pated by the accused products themselves ,”5 and vacated
`the portion of its earlier summary judgment decision , see
`Zone Scene Decision , at * 8–9, that addressed written de-
`scription. Post -Trial Decision, at * 30. Judgment was en-
`tered accordingly. J.A. 107–08.
`Sonos timely appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(1).
`DISCUSSION
`Sonos raises three challenges on appeal . First, it ar-
`gues that the district court erred in granting judgment of
`invalidity of the Zone Scene patents. Second, it argues that
`the district court abused its discretion in holding the Zone
`Scene patents unenforceable due to prosecution laches .
`And third, it argues that the district court erred in granting
`summary judgment of invalidity of the Direct Control pa-
`tent. We address those arguments in turn.
`I. INVALIDITY
`A
`Before reaching the merits of Sonos’s invalidity chal-
`lenge, we address two procedural irregularities of the dis-
`trict court’s decision that impact the framing of our
`analysis.
`
`5 We presume by stating that the “ accused products
`themselves” anticipated the asserted claims, the district
`court meant that the public use or sale of those products
`before the effective filing date of the Zone Scene patents
`rendered them prior art. See 35 U.S.C. § 102(a)(1).
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`GOOGLE LLC v. SONOS, INC. 10
`First, we observe that the court characterized its inva-
`lidity determination based on the asserted new matter as
`one arising under 35 U.S.C. § 102 on the theory that “[t]hat
`which infringes if later[,] anticipates if before.” See Post -
`Trial Decision, at *27. Because all of the accused Google’s
`products had been adjudicated to infringe the ’885 patent,
`and because the district court found that the Zone Scene
`patents were not entitled to a priority date before 2019, it
`held the asserted claims of those patents invalid as antici-
`pated by the accused products. However, because the Zone
`Scene patents are continuation applications of the priority
`application—not continuations -in-part (“CIPs”) —we will
`address the new matter challenge through the lens of writ-
`ten description. Compare Kolmes v. World Fibers Corp. ,
`107 F.3d 1534, 1538 –39 (Fed. Cir. 1997) ( “The question
`raised here is whether the claims added by the preliminary
`amendment to the 1992 continuation application find ade-
`quate support in the 1990 application sufficient to meet the
`description requirement of section 112[.]”), with Augustine
`Med., Inc. v. Gaymar Indus., Inc. , 181 F.3d 1291, 1303
`(Fed. Cir. 1999) (“Subject matter that arises for the first
`time in [a] CIP application does not receive the benefit of
`the filing date of the parent application. Thus, the decision
`on the proper priority date . . . for subject matter claimed
`in a CIP application depends on when that subject matter
`first appeared in the patent disclosures.”). Although this
`may be a distinction without a difference, for clarity of this
`opinion we treat the district court’s judgment as one aris-
`ing under § 112, not § 102.
`6
`
`6 Further, it appears that, in light of the jury’s ver-
`dict that none of the accused Google products infringes the
`’966 patent, see J.A. 10349, the district court’s logic of “that
`which infringes if later, anticipates if earlier” would not
`hold for the claims of that patent.
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`GOOGLE LLC v. SONOS, INC. 11
`Second, we note the unusual posture of the district
`court’s post-trial treatment of the written description issue.
`There is no dispute that the issue of written description
`was not tried to a jury. And Google never moved for sum-
`mary judgment of invalidity of the Zone Scene patents un-
`der § 112; rather, those arguments were raised solely in
`opposition to Sonos’s motion for summary judgment of in-
`fringement. Although it may seem prudent to remand this
`question of fact to be tried in the first instance by the fact-
`finder, both parties argue that we can review the merits of
`the district court’s post -trial decision without such a re-
`mand, by employing summary judgment standards to
`guide our review. See Sonos Br. 68 (“Reversal is required
`if this Court is persuaded that no reasonable factfinder
`could conclude that the priority date was later than 2007.”);
`Oral Arg. 24:38 –25:05, available at https://oralargu-
`ments.cafc.uscourts.gov/default.aspx?fl=24-1097_0710202
`5.mp3 (Google’s counsel acknowledging that this court can
`decide, based on the record, whether there is a genuine dis-
`pute of material fact as to written description). And under
`the unusual circumstances here, we agree.
`As the district court itself noted in its post -trial deci-
`sion, it has the authority to revise, at any time prior to
`judgment, “any order or other decision, however desig-
`nated, that adjudicates fewer than all the claims.” Fed. R.
`Civ. P. 54(b) ; see Post-Trial Decision, at *30 (citing Rule
`54(b)). What is more, Rule 56(f) permits a district court to
`“consider summary judgment on its own after identifying
`for the parties material facts that may not be genuinely in
`dispute,” so long as the court provides the parties with “no-
`tice and a reasona ble time to respond.” Fed. R. Civ.
`P. 56(f)(3). Those two rules, taken together under the cir-
`cumstances of this case, gave the district court authority to
`consider under summary judgment standards the ade-
`quacy of the Zone Scene patents ’ disclosure, despite
`Google’s failure to move for summary judgment on that is-
`sue.
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`GOOGLE LLC v. SONOS, INC. 12
`Accordingly, we construe the district court’s post -trial
`decision as a sua sponte summary judgment decision under
`Rule 56(f), revised as permitted by Rule 54(b), holding that
`the Zone Scene patents are invalid for lack of written de-
`scription. With that framing of the issue, we now turn to
`the merits.
`B
`We review a district court’s grant of summary judg-
`ment of invalidity for lack of written description de novo .
`Atl. Rsch. Mktg. Sys., Inc. v. Troy , 659 F.3d 1345, 1353
`(Fed. Cir. 2011); see PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299, 1307 (Fed. Cir. 2008) (“Compliance with the
`written description requirement is a question of fact but is
`amenable to summary judgment in cases where no reason-
`able fact finder could return a verdict for the non -moving
`party.”). To determine whether the written description re-
`quirement is met, we consider “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.” Ariad
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
`Cir. 2010) (en banc). On this record, we conclude that
`Google has failed to establish a genuine dispute of material
`fact that the Zone Scene patents lack written description of
`the claimed overlapping zone scene functionality.
`We reach our conclusion without the need to determine
`whether the 2019 amendment to the disclosure is or is not
`new matter. Rather, we look to the following disclosure ,
`which accompanies Figures 3A and 3B and is dispositive:
`Using what is referred to herein as a theme or a
`zone scene, zones can be configured in a particular
`scene (e.g., morning, afternoon, or garden) . . . .
`For instance, a “Morning” zone scene/configuration
`command would link the Bedroom, Den and Dining
`Room together in one action . . . . FIG. 3A provides
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`GOOGLE LLC v. SONOS, INC. 13
`an illustration of one zone scene, where . . . the col-
`umn on the right shows the effects of grouping the
`zones to make a group of 3 zones named after
`“Morning.”
`Expanding this idea further, a Zone Scene can be
`set to create multiple sets of linked zones . For ex-
`ample, a scene creates 3 separate groups of zones,
`the downstairs zones would be linked together, the
`upstairs zones would be linked together in their
`own group, and the outside zones (in this case the
`patio) would move into a group of its own.
`In one embodiment as shown in FIG. 3B, a user de-
`fines multiple groups to be gathered at the same
`time. For example: an “Evening Scene” is desired
`to link the following zones:
`Group 1
`Bedroom
`Den
`Dining Room
`Group 2
`Garage
`Garden
`where Bathroom, Family Room and Foyer should
`be separated from any group if they were part of a
`group before the Zone Scene was invoked.
`’885 patent, col. 8 l. 47–col. 9 l. 14 (emphases added). That
`disclosure, which describes 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, plainly provides adequate writ-
`ten description for overlapping zone scene s, where each of
`the Bedroom, Den, and Dining Room simultaneously be-
`long to two different zone scenes. See J.A. 5210–11
`(Sonos’s expert report citing this disclosure, among others,
`as reasonably conveying possession of overlapping zone
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`GOOGLE LLC v. SONOS, INC. 14
`scenes). Moreover, there is no question that Sonos had de-
`scribed and had possession of that invention at least as
`early as 2007, as the cited disclosure appeared verbatim in
`the nonprovisional application, filed that year, from which
`the Zone Scene patents claim priority. See J.A. 8345–46.
`Google argues that the foregoing disclosure does not
`“depict two zone scenes in the same system at the same
`time,” but rather “alternative embodiments” that the spec-
`ification never describes as “concurrent.” Google Br. 32.
`We disagree. Figures 3A and 3B are complimentary , not
`alternative. Not only are they identified by nomenclature
`suggesting that they are related (i.e., 3A and 3B), which on
`its own may not be dispositive, but the description itself
`supports that they form a cohesive idea. Directly after in-
`troducing the “Morning Scene,” depicted in Figure 3A, the
`specification states, “[e]xpanding this idea further , a Zone
`Scene can be set to create multiple sets of linked zones,” by
`linking the “Morning Scene ,” or “Group 1,” a set of linked
`zones containing the Bedroom, Den, and Dining Room ,
`with “Group 2,” a set of linked zones containing the Garage
`and Garden. See ’885 patent, col. 8 l. 52 –col. 9 l. 11 (em-
`phases added). No reasonable factfinder could conclude
`that that language, which clearly conveys Figure 3B ’s fur-
`ther expansion of the idea of Figure 3A, and uses the same
`zone designations —Bedroom, Den, and Dining Room —is
`directed to an entirely separate and “alternative” embodi-
`ment.
`Google further challenges Sonos’s expert testimony as
`“conclusory” and “self-serving,” Google Br. 32, but cites no
`expert testimony of its own. It therefore has failed to es-
`tablish any genuine dispute of material fact as to whether
`a person of ordinary skill in the art would reasonably be-
`lieve that Sonos had possession of overlapping zone scenes
`in at least 2007. See Allergan USA, Inc. v. MSN Lab ’ys
`Priv. Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (“[T]he dis-
`closure must be considered as a whole, as the person of
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`GOOGLE LLC v. SONOS, INC. 15
`ordinary skill in the art would read it, to determine if it
`reasonably conveys possession.”).
`For at least the foregoing reasons, we hold that the dis-
`trict court erred in entering judgment that the asserted
`claims of the Zone Scene patents are invalid as lacking
`written description of overlapping zone scenes.
`II. P
`ROSECUTION LACHES
`In addition to holding the asserted claims invalid, the
`district court entered judgment that the Zone Scene pa-
`tents are unenforceable against Google under the equitable
`defense of prosecution laches . That doctrine “may render
`a patent unenforceable when it has issued only after an un-
`reasonable and unexplained delay in prosecution that con-
`stitutes an egregious misuse of the statutory patent system
`under the totality of the circumstances.” Cancer Rsch.
`Tech. Ltd. v. Barr Lab’ys, Inc., 625 F.3d 724, 728 (Fed. Cir.
`2010) (internal quotation marks and citation omitted). “We
`review a district court’s determination of prosecution
`laches for abuse of discretion, but we review the legal
`standard applied by the district court de novo .” Id. at
`728–29 (internal citations omitted).
`To succeed in its defense, Google must establish that
`Sonos’s delay in prosecution was unreasonable and inex-
`cusable under the totality of circumstances, and that
`Google suffered prejudice attributable to that delay. Hyatt
`v. Hirshfeld, 998 F.3d 1347, 1362 (Fed. Cir. 2021). We limit
`our discussion to the second element —prejudice—which
`we conclude as a matter of law that Google has not estab-
`lished. To prove prejudice, Google “must show evidence of
`intervening rights,” i.e., that either Google or others “in-
`vested in, worked on, or used the claimed technology dur-
`ing the period of delay.” Cancer Rsch., 625 F.3d at 729; see
`Woodbridge v. United States, 263 U.S. 50, 52–53 (1923).
`In its post -trial briefing, the sole argument Google
`made with respect to prejudice was that it “began investing
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`GOOGLE LLC v. SONOS, INC. 16
`in its products by at least 2015,” such that Sonos’s delay in
`not pursuing claims to the overlapping zone scene function-
`ality until the Zone Scene patents were filed in 2019 caused
`Google to suffer prejudice. See J.A. 11053. But Google pre-
`sented no evidence— testimony or otherwise—to support
`its assertion that its investment in those products actually
`began in 2015,
`7 or that it was caught unawares that Sonos
`may have already invented the adjudicated- infringing
`functionality when making those investments . Without
`any evidence, Google cannot meet its burden of establish-
`ing prejudice.
`Moreover, even if we accept as fact that Google’s invest-
`ment began in 2014 or 2015, it cannot establish prejudice
`on this record. Although Sonos submitted a nonpublication
`request with the filing of its 2007 nonprovisional applica-
`tion (an entirely lawful request, see 35 U.S.C.
`§ 122(b)(2)(B)(i)), that application was published when it
`issued as U.S. Patent 8,483,853 on July 9, 2013. See Post-
`Trial Decision, at *9. As we have concluded above, no rea-
`sonable factfinder could conclude that the specifica-
`tion—which was published in 2013, before any of Google’s
`asserted investments—does not reasonably disclose over-
`lapping zone scenes. Google cannot be prejudiced by incor-
`porating into its products a feature that was publicly
`disclosed in a patent application prior to its investment.
`Cf. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 909
`(Fed. Cir. 2004) (“[I]t is not improper for an applicant to
`broaden his claims during prosecution in order to encom-
`pass a competitor’s products, as long as the disclosure sup-
`ports the broadened claims .”); Eli Lilly & Co. v. Hospira,
`Inc., 933 F.3d 1320, 1334 (Fed. Cir. 2019) (explaining that,
`although subject matter disclosed but not claimed is
`
`7 On appeal, Google asserts, again without any rec-
`ord citation, that it began developing its products in 2014.
`Google Br. 59.
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`GOOGLE LLC v. SONOS, INC. 17
`generally dedicated to the public, there is an ex ception for
`subject matter “claimed in a continuation or other applica-
`tion”).
`At bottom, Google presents no evidence that it suffered
`prejudice attributable to Sonos’s delay in claiming, but not
`disclosing, overlapping zone scenes. The district court
`erred in concluding otherwise, and therefore abused its dis-
`cretion in holding the Zone Scene patents unenforceable for
`prosecution laches.
`III
`Finally, we turn to the district court’s grant of sum-
`mary judgment that the asserted claims of the Direct Con-
`trol patent are invalid as obvious over YTR2, in view of the
`’998 patent. Sonos argues that the district court improp-
`erly resolved 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. We disagree.
`Beginning with the remote playback queue, it is undis-
`puted that YTR2 includes a “party mode” in which two or
`more users can manage a queue of YouTube videos and
`transfer playback of those videos from two or more mobile
`devices to one or more screens. See Direct Control Decision,
`at *6. The issue is whether that shared party queue is
`stored for playback at the remote server or whether it is
`stored locally, on each of the screens . We agree with the
`district court that there is no genuine dispute of materia l
`fact that YTR2 stores the playback queue remotely at the
`server. See id. at *7 –8. Indeed, Sonos appears to
`acknowledge that the remote server contains a copy of the
`playback queue, which it receive s from the users’ mobile
`devices and t hen se nds to one or more screens . Sonos
`Br. 77–78. Sonos instead argues that the YTR2 d oes not
`permit playback of that remote queue, but only playback of
`the local queue stored on each screen . Id. at 78. Sonos
`demands more of the claim than is required. As Google
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`GOOGLE LLC v. SONOS, INC. 18
`notes, the claims do not require each user device to contin-
`ually access the remote server, Google Br. 67, nor do they
`require the computing device to play back from the remote
`queue, Sonos Br. 78. All the claims require is a computing
`device “configured for playback of a remote playback queue
`provided by a cloud-based computing system,” ’033 patent,
`col. 17 l. 39– 41, and there is no dispute that the remote
`server sends, i.e., provides, a copy of the playback queue it
`receives from the users’ mobile devices to the one or more
`screens for playback. See Sonos Br. 77–78.
`We further agree with the district court that there is
`no genuine dispute of material fact that the combination of
`YTR2 and the ’998 patent would have rendered obvious the
`“device picker” limitation at the time of the alleged inven-
`tion. That limitation requires the computing device to “dis-
`play[] a representation of one or more playback devices in
`a media playback system” and “receiv