Sonos, Inc. v. Google LLC

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SONOS, INC., Plaintiff, v. GOOGLE LLC, Defendant.

No. C 20-06754 WHA

United States District Court, N.D. California

April 12, 2023

ORDER RE MOTIONS TO STRIKE PORTIONS OF EXPERT REPORTS

WILLIAM ALSUP UNITED STATES DISTRICT JUDGE

INTRODUCTION

In this patent infringement action, both sides move to strike portions of each other's expert reports. For the following reasons, patent owner's motion is GRANTED IN PART and DENIED IN PART, and alleged infringer's motion is DENIED.

STATEMENT

Sonos Inc. accuses Google LLC of infringing U.S. Patent Nos 10,779,033; 10,848,885; and 10,469,966. These patents generally concern multi-room “smart” speaker technology. Specifically, the '033 patent covers technology related to transferring playback between devices i.e., “casting,” whereas the '885 and '966 patents cover technology related to managing groups of smart speakers.

In the lead-up to trial, both parties have filed motions to strike portions of each other's expert reports (Dkt. Nos. 464, 469), as well as new motions for summary judgment (Dkt. Nos. 478, 483). Sonos also filed a renewed motion to realign the parties (Dkt. No. 477), which the undersigned granted at the hearing after Google withdrew its opposition (Dkt. No. 557). This order considers only the motions to strike.

1. Sonos'S Motion to Strike.

According to Sonos, Google improperly introduced new invalidity theories, noninfringement theories, and non-infringing alternatives in its expert reports.

By way of background, Sonos explains that Google served invalidity contentions pursuant to Patent Local Rule 3-3 on December 6, 2021, which it urged Google to amend to no avail in March 2022 (Sonos Br. 3; Moss Exh. G). Separately, Sonos served interrogatories asking Google to describe its non-infringing alternatives and non-infringement positions on August 7, 2021 (Moss Exh. H at 16, 19-20). In the last week of fact discovery, Google served supplemental responses to these interrogatories, describing its non-infringing alternatives and non-infringement positions on November 21, 2022, and November 29, 2022, respectively (Moss Exhs. I, J). Then, on the last day of fact discovery, November 30, 2022, Google served the opening expert reports of Dr. Samrat Bhattacharjee and Dr. Dan Schonfeld (Moss Exhs. A, D). Google served the experts' rebuttal and reply reports on January 13, 2023, and January 23, 2023, respectively (Moss Exhs. B, C, E, F). Dr. Bhattacharjee's reports address invalidity and non-infringement of the '033 patent, whereas Dr. Schonfeld's reports address invalidity and non-infringement of the '885 and '966 patents.

Sonos argues that “despite [its] discovery obligations and procedural rules designed to promote disclosure and efficiency, Google waited until serving its expert reports to disclose a broad array of new invalidity and non-infringement theories,” thereby “hid[ing] the ball until fact discovery had closed” (Sonos Br. 2). Google purportedly failed to amend its invalidity contentions, to disclose its new positions in its interrogatory responses, and to supplement its disclosures as required under Federal Rule of Civil Procedure 26(e)(1). For that reason, Sonos asserts that Google's new theories are untimely and improper, and that they should be struck from Dr. Bhattacharjee and Dr. Schonfeld's reports.

2. Google'S Motion to Strike.

Meanwhile, according to Google, it was Sonos that improperly introduced new validity and infringement theories in its expert reports.

Sonos served infringement contentions pursuant to Patent Local Rule 3-1 on October 21, 2021 (Google Br. 4). Google emphasizes that Sonos was granted leave to amend these contentions several times, most recently on January 12, 2023 (Dkt. No. 447). (In some instances, Google opposed amendment, whereas in others, including the most recent instance, Google did not.) Sonos served the opening expert report of Dr. Douglas Schmidt on infringement of the '033 patent on November 30, 2022 (Kaplan Exh. 2). It served his rebuttal report on validity and his reply report on infringement on January 13, 2023, and January 23, 2023, respectively (Kaplan Exhs. 3, 5).

Google argues that Sonos presented new validity and infringement theories in Dr. Schmidt's rebuttal and reply reports that are based on claim constructions first disclosed in his rebuttal report and that are different than those provided by the Court. Google further argues that Sonos presented new infringement theories in all of Dr. Schmidt's reports that were not disclosed in Sonos's infringement contentions, and that Sonos presented new infringement theories in Dr. Schmidt's reply report that were not disclosed in his opening report (Google Br. 5). Like Sonos, Google asserts that these new theories are therefore untimely and improper, and that they should be struck from Dr. Schmidt's reports.

The motions will be taken up in turn. This order follows full briefing and oral argument.

ANALYSIS

The patent local rules require parties to disclose infringement and invalidity contentions early. See Patent L.R 3-1, 3-3. As such, they may not use expert reports “to introduce new infringement theories, new infringing instrumentalities, new invalidity theories, or new prior art references not disclosed in the parties' infringement contentions or invalidity contentions.” See ASUS Comput. Int'l v. Round Rock Rsch., LLC, 2014 WL 1463609, at *1 (N.D. Cal. Apr. 11, 2014) (Judge Nathaniel M. Cousins). But the rules permit amendment of contentions as new and previously unavailable information comes to light in discovery. See Patent L.R. 3-6; O2MicroInt'lLtd. v. MonolithicPwr. Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006). And, they do “not require identification of every evidentiary item of proof.” Oracle Am., Inc. v. Google Inc., 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26, 2011) (emphases omitted). Meanwhile, the Federal Rules of Civil Procedure require parties to supplement interrogatory responses on pain of not being able to use new information moving forward unless the failure to supplement is substantially justified or harmless. See Fed. R. Civ. P 26(e)(1), 37(c)(1).

“The threshold question in deciding whether to strike an expert report” or, in this case, select portions of an expert report, is “whether the expert has permissibly specified the application of a disclosed theory or impermissibly substituted a new theory altogether.” Digital Reg of Tex., LLC v. Adobe Sys. Inc., 2014 WL 1653131, at *5 (N.D. Cal. Apr. 24, 2014) (Judge Kandis A. Westmore). When the line between permissible application of a disclosed theory and impermissible substitution of a new theory blurs, the district court “revert[s] to a simple question: will striking the report result in not just a trial, but an overall litigation, that is more fair, or less?” Apple Inc. v. Samsung Elecs. Co., 2012 WL 2499929, at *1 (N.D. Cal. June 27, 2012) (Judge Paul S. Grewal).

This order begins with Sonos's motion to strike and associated arguments.

1. Sonos'S Motion: New Invalidity Theories.

Starting with its first batch of arguments, Sonos avers that Google improperly introduced previously undisclosed invalidity theories in both Dr. Bhattacharjee and Dr. Schonfeld's expert reports. Sonos seeks to strike material related to: (A) the Tungsten/NexusQ system's “Magic Playlist” feature; (B) the YouTube Remote system's provision of “automatic playback”; and (C) certain Bose products.

A. Tungsten/NexusQ System'S “MAGIC Playlist.”

First, according to Sonos, Google improperly asserted for the first time in Dr. Bhattacharjee's opening report that the “Magic Playlist” feature of the Tungsten/NexusQ system anticipated claim 1 of the '033 patent (Sonos Br. 6-8). Dr. Bhattacharjee's opening report states that “[i]n addition to allowing users to play user-created playlists, the prior art Tungsten/NexusQ was also able to playback playlists that were generated and stored in the cloud” (Moss Exh. A ¶ 218). This “allowed users to request that the cloud servers generate and provide a playlist of songs that were related to, for instance, specific tracks or albums, which was called a ‘Magic Playlist'” (Moss Exh. A ¶ 220). As such, “[t]he Magic Playlist [was] a ‘remote playback queue'” per limitation 1.4 of the '033 patent, which requires a “computing device [] configured for playback of a remote playback queue provided by a cloudbased computing system associated with a cloud-based media service” (Moss Exh. A ¶ 499; '033 patent 17:39-42). Sonos decries that the Magic Playlist feature appeared nowhere in Google's invalidity contentions, which only disclosed the Tungsten/NexusQ system as prior art (Sonos Br. 6).

But there is no new theory of invalidity here. Admittedly, Google should have been more forthcoming when it stated in its invalidity contentions that “the Tungsten/NexusQ system anticipate[d] the asserted claims of the '033 patent under at least the interpretation that [Sonos] appears to rely on for its infringement theories” (Google Opp. 5) (internal quotation marks omitted). But Google provided additional information in its invalidity contentions sufficient to disclose its theory of invalidity. Note Google's invalidity claim chart described how the Tungsten/NexusQ system enabled users to “pull the music directly from the music library in the cloud,” with a screenshot showing one user selecting a playlist to make “[a]vailable offline”:

(Image Omitted)

(Moss Exh. K at 9-12).

Sonos takes issue with the fact that Google did not expressly disclose a “playlist” when it stated that the Tungsten/NexusQ system allowed users to pull music directly from the cloud; after all, “pulling a single media file from a music library in the cloud would not require a ‘playlist' at all, much less...