Sonos, Inc. v. Google LLC

Case: 23-2040 Document: 44 Page: 1 Filed: 06/18/2025

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

SONOS, INC.,

Appellant

v.

GOOGLE LLC,

Appellee

______________________

2023-2040

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2021-

01563.

______________________

Decided: June 18, 2025

______________________

ERIC SHUMSKY, Orrick, Herrington & Sutcliffe LLP,

Washington, DC, argued for appellant. Also represented

by JONAS WANG; EDMUND HIRSCHFELD, EMILY VILLANO,

New York, NY; ELIZABETH MOULTON, San Francisco, CA;

GEORGE I. LEE, COLE BRADLEY RICHTER, MATTHEW

SAMPSON, I, RORY PATRICK SHEA, JOHN DAN SMITH, III,

SEAN MICHAEL SULLIVAN, Lee Sullivan Shea & Smith LLP,

Chicago, IL.

ERIKA ARNER, Finnegan, Henderson, Farabow, Garrett

Case: 23-2040 Document: 44 Page: 2 Filed: 06/18/2025

2 SONOS, INC. v. GOOGLE LLC

& Dunner, LLP, Washington, DC, argued for appellee.

Also represented by UMBER AGGARWAL, DANIEL C. TUCKER,

Reston, VA; CORY C. BELL, Boston, MA; KARA ALLYSE

SPECHT, Atlanta, GA.

______________________

Before PROST, LINN, and STOLL, Circuit Judges.

STOLL, Circuit Judge.

Google LLC successfully petitioned for inter partes re-

view of claims 1–2, 6–14, 18–25, and 27–29 of U.S. Patent

No. 9,967,615 owned by Sonos, Inc. The Patent Trial and

Appeal Board held that Google had demonstrated by pre-

ponderant evidence that all challenged claims are un-

patentable as obvious. On appeal, Sonos argues that

certain findings by the Board lack substantial evidence

support. For the reasons that follow, we disagree and af-

firm the Board’s decision.

BACKGROUND

As the parties are familiar with the facts of this case,

we recite here only those facts necessary to frame and de-

cide the issues presented on appeal.

The ’615 patent is titled “Networked Music Playback”

and discloses “[s]ystems, methods, apparatus, and articles

of manufacture to facilitate connection to a multimedia

playback network.” U.S. Patent No. 9,967,615 Title, Ab-

stract (capitalization normalized). The patent “is related

to consumer electronics and, more particularly, to provid-

ing music for playback via one or more devices on a play-

back data network.” ’615 patent col. 1 ll. 13–15. Claims 1

and 9 are representative and provided below with the dis-

puted limitations emphasized.

1. A method comprising:

Case: 23-2040 Document: 44 Page: 3 Filed: 06/18/2025

SONOS, INC. v. GOOGLE LLC 3

. . . detecting, via the control device, a set of inputs

to transfer playback from the control device to a

particular playback device . . .

. . . causing playback to be transferred from the

control device to the particular playback device,

wherein transferring playback from the control de-

vice to the particular playback device comprises:

(a) causing one or more first cloud servers to add

multimedia content to a local playback queue on

the particular playback device, wherein adding the

multimedia content to the local playback queue

comprises the one or more first cloud servers

adding, to the local playback queue, one or more re-

source locators corresponding to respective loca-

tions of the multimedia content at one or more

second cloud servers of a streaming content service;

(b) causing playback at the control device to

be stopped; and

. . . causing the particular playback device to play

back the multimedia content, wherein the particu-

lar playback device playing back the multimedia

content comprises the particular playback device

retrieving the multimedia content from one or

more second cloud servers of a streaming content

service and playing back the retrieved multimedia

content.

9. The method of claim 1, wherein causing one or

more first cloud servers to add the multimedia con-

tent to the local playback queue on the particular

playback device comprises sending a message to

the streaming content service that causes the

one or more first cloud servers to add the multime-

dia content to the local playback queue on the par-

ticular playback device.

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4 SONOS, INC. v. GOOGLE LLC

’615 patent cols. 17–19 (emphases added to distinguish

claim limitations in dispute).

Three prior art references are pertinent on ap-

peal: Al-Shaykh, 1 Qureshey, 2 and Phillips. 3 Relevant

here, the Board concluded that Google had demonstrated

that claims 1, 6–13, 18–25, and 27–29 of the ’615 patent

are unpatentable under 35 U.S.C. § 103 based on a combi-

nation of some or all of these three prior art references.

Sonos appeals. We have jurisdiction under 28 U.S.C.

§ 1295(a)(4)(A).

DISCUSSION

Our court reviews “the Board’s obviousness determina-

tion de novo, but its factual findings for substantial evi-

dence.” Volvo Penta of the Ams., LLC v. Brunswick Corp.,

81 F.4th 1202, 1208 (Fed. Cir. 2023). What a reference

teaches is a question of fact. TriMed, Inc. v. Stryker Corp.,

608 F.3d 1333, 1341 (Fed. Cir. 2010). “Whether a skilled

artisan would have been motivated to combine references”

is also a question of fact that we review for substantial ev-

idence. Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th

1368, 1374 (Fed. Cir. 2023). “Substantial evidence means

‘such relevant evidence as a reasonable mind might accept

as adequate to support a conclusion.’” Id. at 1373 (quoting

In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)).

On appeal, Sonos challenges various findings by the

Board involving the three aforementioned prior art refer-

ences: (1) that a person of ordinary skill in the art would

have been motivated to combine the relevant teachings of

Al-Shaykh and Qureshey to meet the “one or more first

cloud servers” limitation of claim 1; (2) that a person of

1 U.S. Patent Application Publication

No. 2011/0131520.

2 U.S. Patent No. 8,050,652.

3 U.S. Patent No. 8,799,496.

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SONOS, INC. v. GOOGLE LLC 5

ordinary skill in the art would have been motivated to com-

bine the relevant teachings of Al-Shaykh and Qureshey to

meet the “sending a message to the streaming content ser-

vice” limitation of claim 9; and (3) that Al-Shaykh teaches

“causing playback at the control device to be stopped” as

recited in claim 1, or, in the alternative, that a person of

ordinary skill in the art would have been motivated to com-

bine the relevant teachings of Al-Shaykh and Phillips to

meet this limitation. We address each challenge in turn.

I

We first address Sonos’s contention that substantial

evidence does not support the Board’s finding that a person

of ordinary skill in the art would have been motivated to

modify Al-Shaykh in view of Qureshey to meet claim 1’s

“one or more first cloud servers” limitation. For the follow-

ing reasons, we uphold the Board’s finding.

Al-Shaykh is titled “System and Method for Transfer-

ring Media Content From a Mobile Device to a Home Net-

work,” J.A. 3273 (capitalization normalized), and “relates

to a system and a method which enable a media application

on the mobile device to share media content with rendering

devices [i.e., playback devices, e.g., a television, stereo, or

personal computer (PC)] in the home network.” J.A. 3284

¶¶ 77, 81. Qureshey is titled “Method and Device for an

Internet Radio Capable of Obtaining Playlist Content from

a Content Server” and discloses a “network-enabled audio

device that provides a display device that allows the user

to select playlists of music much like a jukebox.” J.A 3298

(capitalization normalized). Qureshey’s disclosure “relates

to the field of audio file transfers and, more particularly,

relates to the field of management and distribution of audio

files over a computer network such as the Internet.”

J.A. 3350 at 1:21–24. As the Board recognized:

[I]n the combined Al-Shaykh-Qureshey system,

when a set of inputs to transfer playback from the

mobile device to the particular rendering device is

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6 SONOS, INC. v. GOOGLE LLC

detected, as disclosed in Al-Shaykh, then the sys-

tem would cause a first cloud server (i.e.,

Qureshey’s [Internet Personal Audio Network

(IPAN)] server) to add [Uniform Resource Locators

(URLs)] associated with the locations of the audio

files to the storage space [] (as disclosed in

Qureshey) in Al-Shaykh’s rendering devices.

J.A. 37 (first alteration in original) (citation omitted).

Sonos begins its argument by asserting that “[t]he

Board failed to cite substantial evidence that a skilled ar-

tisan looking to improve Al-Shaykh would have considered

Qureshey at all.” Appellant’s Br. 44. We reject this con-

tention.

It is undisputed that Al-Shaykh and Qureshey are

analogous art to the ’615 patent. See J.A. 122–34, 443,

3129 ¶ 78 (Google and its expert explaining that Al-Shaykh

and Qureshey are analogous art to the ’615 patent);

J.A. 296 (Board explaining in its decision to institute that

Google’s showing, including on analogous art, was “unop-

posed”); J.A. 353–420, 463–89 (Sonos raising no dispute re-

lated to analogous art in its Patent Owner Response and

Sur-Reply). And “[w]hen the references are all in the same

or analogous fields, knowledge thereof by the hypothetical

person of ordinary skill is presumed.” In re Gorman,

933 F.2d 982, 986 (Fed. Cir. 1991).

Based on the disclosures of Al-Shaykh and Qureshey

and the Declaration of Google’s expert Dr. Harry Bims, the

Board found that Al-Shaykh and Qureshey “are in the

same field of endeavor, deal with similar devices, and are

directed to . . . solving the same or similar problems.”

J.A. 42–43. Contrary to Sonos’s contentions on appeal—

and to the extent that Sonos has not forfeited them—sub-

stantial evidence supports this finding. For example,

Dr. Bims provided detailed testimony that a person of or-

dinary skill in the art would have understood that Al-

Shaykh and Qureshey “enable users to transfer playback

Case: 23-2040 Document: 44 Page: 7 Filed: 06/18/2025

SONOS, INC. v. GOOGLE LLC 7

to various devices and playback content on those devices

from the Internet, which, a [skilled artisan] would under-

stand to provide much greater accessibility to content than

traditional systems that were limited to playback of con-

tent locally stored on the network.” J.A. 3125–26 ¶ 72. He

further testified that a person of ordinary skill in the art

“would understand that both references describe net-

worked media playback systems that include a control de-

vice (such as a PC or mobile device) and one or more

rendering devices.” J.A. 3126 ¶ 73. Moreover, Sonos con-

ceded that Qureshey’s system and approach were “‘well-

known’ by Al-Shaykh’s era.” Appellant’s Reply 15; J.A. 43,

384–86. And, as the Board noted, we have held that

“[t]here is a motivation to combine when a known tech-

nique has been used to improve one device, and a person of

ordinary skill in the art would recognize that it would im-

prove similar devices in the same way, using the prior art

elements according to their established functions.” Intel

Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81

(Fed. Cir. 2023) (citations omitted) (internal quotation

marks omitted); see also In re Inland Steel Co., 265 F.3d

1354, 1362 (Fed. Cir. 2001) (“The motivation to combine

particular references may come from the nature of the

problem to be solved, leading inventors to look to the refer-

ences relating to possible solutions to that problem.” (inter-

nal quotation marks and citation omitted)).

Sonos next asserts that the Board “erroneously found

that a skilled artisan looking to improve Al-Shaykh would

have incorporated Qureshey’s IPAN server in particular.”

Appellant’s Br. 58. Again, we disagree.

Al-Shaykh discloses: (1) that the mobile device may in-

struct the target rendering device (e.g., a PC) to obtain the

media content directly from the media server in the home

network, J.A. 3286 ¶ 96; (2) that the home network may

provide a connection to the Internet, J.A. 3284 ¶ 80; and

(3) that metadata associated with audio media content may

be provided, J.A. 3285 ¶ 87. But Al-Shaykh does not

Case: 23-2040 Document: 44 Page: 8 Filed: 06/18/2025

8 SONOS, INC. v. GOOGLE LLC

disclose further detail on this functionality. Qureshey, on

the other hand, discloses this functionality and provides

further detail not included in Al-Shaykh. For example,

Qureshey discloses:

The user accesses the server site via a PC and the

Internet. From the server site, the user obtains a

list of the devices in his or her Internet Personal

Audio Network (IPAN) and what songs are on

those devices. The IPAN includes an IPAN server,

an IPAN client, and IPAN software stored on the

network-enabled audio device. . . . The IPAN client

and the IPAN server store the name of the song and

the associated Uniform Resource Locator (URL).

J.A. 3351 at 3:34–48; see also, e.g., J.A. 3314, 3352, 3357–

58 at 16:56–17:31 (describing a computing environment of

a network-enabled audio device configuration). Qureshey

further provides that each network-enabled audio device

can store a playlist, associated URLs, and songs within the

playlist. J.A. 3360 at 21:43–50.

Dr. Bims explained that a skilled artisan “would have

modified Al-Shaykh’s system to include features from

Qureshey’s system. Specifically, . . . Al-Shaykh’s system

would incorporate Qureshey’s first cloud server (i.e., the

IPAN server).” J.A. 3145 ¶ 101. He continued:

[A skilled artisan] would have been motivated to

incorporate the back-end server functionality that

enables a rendering device to directly retrieve con-

tent from the Internet to play back, as taught by

Qureshey, into Al-Shaykh’s system . . . .

Al-Shaykh’s rendering devices can directly retrieve

media content from a remote server for playback

but Al-Shaykh does not explain the details on the

back-end functionality that facilitates this transac-

tion. Thus, it is my opinion that a [skilled artisan]

would have looked to similar references in the art

for further disclosures of networked playback

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SONOS, INC. v. GOOGLE LLC 9

systems to determine how playback devices within

the systems are able to directly retrieve content

from remote sources, and, thus, a [skilled artisan]

would have found it obvious to combine Al-Shaykh

and Qureshey in this way.

. . . [A skilled artisan] would have been motiv[at]ed

to implement Qureshey’s back-end server function-

ality to improve the system by preventing any dis-

connection or failure of a mobile control device to

impact ongoing playback on the rendering device.

That is, a [skilled artisan] would understand that

the added functionality enables storage of URLs on

the rendering device such that the rendering device

can retrieve the content to be played back without

assistance from the mobile control device. It is my

opinion that a [skilled artisan] would recognize

that such a combination would vastly improve the

user experience by minimizing playback stoppages

at the rendering device.

J.A. 3146–47 ¶¶ 102–03 (citations omitted).

This expert testimony is not conclusory or otherwise

defective, is supported by disclosures in Al-Shaykh and

Qureshey themselves, and the Board was within its discre-

tion to give the expert testimony considerable weight.

Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d

1366, 1376 (Fed. Cir. 2020) (determining that expert testi-

mony constituted substantial evidence of a motivation to

combine prior art references). Accordingly, we hold that

substantial evidence supports the Board’s finding that a

skilled artisan would have been motivated to combine the

relevant teachings of Al-Shaykh and Qureshey, including

Qureshey’s IPAN server, to meet claim 1’s “one or more

first cloud servers” limitation.

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10 SONOS, INC. v. GOOGLE LLC

II

Next, we next address Sonos’s contention that substan-

tial evidence does not support the Board’s finding that a

person of ordinary skill in the art would have been moti-

vated to combine the relevant teachings of Al-Shaykh and

Qureshey to meet claim 9’s “sending a message to the

streaming content service” limitation.

Sonos argues that “[t]he Board’s motivation-to-combine

analysis was insufficient twice over,” Appellant’s Br. 69,

but Sonos never raised an argument to the Board related

to motivation-to-combine for claim 9. In its Patent Owner

Response, Sonos argued only that Al-Shaykh’s disclosure

“simply does not amount to the specific functionality re-

quired by claim 9.” J.A. 419–20. In its Sur-Reply, Sonos

argued only that “Al-Shaykh combined with Qureshey does

not satisfy claim 9.” J.A. 489. Accordingly, we agree with

Google that Sonos forfeited the motivation-to-combine ar-

gument it now raises on appeal. “A party forfeits an argu-

ment that it failed to present to the Board because it

deprives the court of the benefit of the Board’s informed

judgment.” Schwendimann v. Neenah, Inc., 82 F.4th 1371,

1380 (Fed. Cir. 2023) (quoting In re NuVasive, Inc.,

842 F.3d 1376, 1380 (Fed. Cir. 2016)) (internal quotation

marks omitted). We thus decline to consider this argument

for the first time on appeal. See Netflix, Inc. v. DivX, LLC,

84 F.4th 1371, 1378 (Fed. Cir. 2023).

III

Finally, we turn to Sonos’s argument that substantial

evidence does not support (1) the Board’s finding that

Al-Shaykh teaches “causing playback at the control device

to be stopped” as recited in claim 1, or (2) its alternative

finding that a person of ordinary skill in the art would have

been motivated to combine the relevant teachings of

Al-Shaykh and Phillips to meet this limitation. For the

reasons that follow, we uphold the first finding by the

Board and, thus, we need not reach the second.

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SONOS, INC. v. GOOGLE LLC 11

The Board credited the testimony of Dr. Bims and

found that, “[a]s disclosed in the paragraphs of

Al-Shaykh . . . , Al-Shaykh stops rendering of the media

content on the device currently rendering the media con-

tent when the media content is transferred to a new ren-

dering device.” J.A. 48–49. Al-Shaykh discloses:

[A]n advantage of the present invention is to pro-

vide a system and a method for transferring media

content from a mobile device to a home network

which enable a user to use the mobile device to

start and stop external rendering of the media con-

tent currently selected in a media application exe-

cuted by the mobile device.

J.A. 3283 ¶ 53. Among other things, Al-Shaykh further

provides:

If the transfer of the media content [] is enabled,

the user [] may . . . select a new target rendering

device. As a result, the transfer to and/or the ren-

dering of the media content [] on the initial target

rendering device may be stopped, and/or the trans-

fer to and/or the rendering of the media content []

on the new target rendering device may begin.

J.A. 3293 ¶ 156. Based on these disclosures in Al-Shaykh,

Dr. Bims provided detailed testimony that “Al-Shaykh dis-

closes transferring playback from the control device to the

particular playback device further comprising causing

playback at the control device to be stopped (e.g., enabling

transfer of media content to rendering device stops play-

back at the mobile device).” J.A. 3147–48 ¶¶ 104–06.

Based on the above quoted language in Al-Shaykh and

Dr. Bims’ testimony, we hold that substantial evidence

supports the Board’s finding that Al-Shaykh teaches “caus-

ing playback at the control device to be stopped” as recited

in claim 1. As such, we need not reach the Board’s alterna-

tive finding.

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12 SONOS, INC. v. GOOGLE LLC

CONCLUSION

We have considered Sonos’s remaining arguments and

are unpersuaded. For the foregoing reasons, we affirm the

decision of the Board.

AFFIRMED