Google LLC v. Sonos, Inc.

Case: 24-1097 Document: 103 Page: 1 Filed: 08/28/2025

NOTE: This disposition is nonprecedential.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 ANDREW

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 JOSEPH RAYMOND KOLKER; ALYSSA

Case: 24-1097 Document: 103 Page: 2 Filed: 08/28/2025

2 GOOGLE LLC v. SONOS, INC.

MARGARET CARIDIS, NICHOLAS GONZALEZ, Los Angeles, CA;

ELIZABETH MOULTON, CLEMENT ROBERTS, SACHI

SCHURICHT, San Francisco, CA; LAUREN 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 Marie 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.

Case: 24-1097 Document: 103 Page: 3 Filed: 08/28/2025

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 players,” 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, cause 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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4 GOOGLE LLC v. SONOS, INC.

(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, during 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 patent 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 ll. 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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6 GOOGLE LLC v. SONOS, INC.

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. The cases were thereafter

consolidated in the California court. See In re Google LLC,

No. 2021-170, 2021 WL 4427899, at *1 (Fed. Cir. Sept. 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. In

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

Case: 24-1097 Document: 103 Page: 7 Filed: 08/28/2025

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 Sonos 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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8 GOOGLE LLC v. SONOS, INC.

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 patents because Sonos

filed the provisional application from which those 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)). The 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

Case: 24-1097 Document: 103 Page: 9 Filed: 08/28/2025

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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10 GOOGLE LLC v. SONOS, INC.

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 reasonable 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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12 GOOGLE LLC v. SONOS, INC.

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 scenes, 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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14 GOOGLE LLC v. SONOS, INC.

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. PROSECUTION 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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16 GOOGLE LLC v. SONOS, INC.

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 exception 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 material

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 receives from the users’ mobile

devices and then sends to one or more screens. Sonos

Br. 77–78. Sonos instead argues that the YTR2 does 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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18 GOOGLE LLC v. SONOS, INC.

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[e] user input indi-

cating a selection of at least one given playback device from

the one or more playback devices.” ’033 patent, col. 17 ll.

43–44, 50–52. As the district court noted, the ’998 patent

discloses a remote control application that can be used to

“initiate contact with a server . . . for pairing remote con-

trol 75 to one or more controlled devices,” and that “[i]n

some examples, the user may also utilize the remote con-

trol application of remote control 75 to select one of more

previously paired controlled devices.” ’998 patent, col. 10

l. 63–col. 11 l. 3 (emphasis added). We agree with the dis-

trict court that the only reasonable interpretation of that

disclosure is that the remote-control application of the ’998

patent allows a user to select a device from a list of previ-

ously paired controlled devices for pairing. Sonos’s attempt

to create a genuine dispute of material fact as to that dis-

closure is unpersuasive.

Accordingly, we agree with the district court’s grant of

summary judgment of invalidity of the asserted claims of

the Direct Control patent.

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GOOGLE LLC v. SONOS, INC. 19

CONCLUSION

We have considered the parties’ remaining arguments

and find them unpersuasive. For the foregoing reasons, we

reverse the district court’s judgment that claims 1, 2, 4, 6,

and 8 of the ’966 patent and claim 1 of the ’885 patent are

invalid for lack of written description and that the ’966 and

’885 patents are unenforceable under the doctrine of pros-

ecution laches. We affirm the district court’s judgment

that claims 1, 2, 4, 9, 11–13, and 16 of the ’033 patent are

invalid as obvious. Upon receipt of the mandate, the dis-

trict court is instructed to consider, in the first instance and

if still contested, any remaining motions mooted by its

judgment, see Post-Trial Decision, at *30.

REVERSED-IN-PART AND AFFIRMED-IN-PART

COSTS

The parties shall bear their own costs.