Google LLC v. Sonos, Inc.

Case: 23-1259 Document: 39 Page: 1 Filed: 05/23/2024

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC,

Appellant

v.

SONOS, INC.,

Appellee

______________________

2023-1259

______________________

Appeal from the United States Patent and Trademark

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

00964.

______________________

Decided: May 23, 2024

______________________

DANIEL C. TUCKER, Finnegan, Henderson, Farabow,

Garrett & Dunner, LLP, Reston, VA, argued for appellant.

Also represented by ERIKA ARNER, KELLY HORN, Washing-

ton, DC; CORY C. BELL, Boston, MA.

ELIZABETH MOULTON, Orrick, Herrington & Sutcliffe

LLP, San Francisco, CA, argued for appellee. Also repre-

sented by ALYSSA MARGARET CARIDIS, Los Angeles, CA;

MARK S. DAVIES, Washington, DC; PARTH SAGDEO, Boston,

MA; EMILY VILLANO, New York, NY.

Case: 23-1259 Document: 39 Page: 2 Filed: 05/23/2024

2 GOOGLE LLC v. SONOS, INC.

______________________

Before LOURIE, PROST, and STARK, Circuit Judges.

PROST, Circuit Judge.

Google LLC (“Google”) appeals a Patent Trial and Ap-

peal Board (“Board”) final written decision concluding that

claims 1‒5, 7‒12, 14‒16, 18, and 20 of U.S. Patent No.

10,229,586 (“the ’586 patent”) are unpatentable. Sonos,

Inc. v. Google LLC, No. IPR2021-00964, 2022 WL 5265117

(P.T.A.B. Oct. 6, 2022) (“Decision”). For the reasons below,

we affirm.

BACKGROUND

Sonos, Inc. (“Sonos”) filed a petition for inter partes re-

view of the ’586 patent, including review of claims 3, 4, 11,

12, and 20 (the “delay-value claims”). The ’586 patent “re-

lates to a wireless sensor unit system providing bi-direc-

tional communication between a sensor . . . and a repeater

or base unit.” ’586 patent col. 1 ll. 38‒41. In an embodi-

ment with more than one repeater, there is a “possibility

that two repeaters . . . could try to forward packets for the

same sensor unit” at the same time, causing messages to

collide and become corrupted or garbled. Id. at col. 11

ll. 34‒36. To “reduc[e] the chance of packet collisions,” a

“delay period is programmed into each repeater.” Id. at

col. 11 ll. 38‒42.

Sonos presented three grounds of unpatentability in its

petition: (1) obviousness in view of Baker 1 and Bruckert, 2

(2) obviousness in view of Baker, Bruckert, and McMillin, 3

1 U.S. Patent App. Pub. No. 2006/0120433 (“Baker”);

J.A. 1225‒52.

2 European Patent App. No. 0416732 (“Bruckert”).

3 U.S. Patent No. 7,027,773 (“McMillin”);

J.A. 2195‒2259.

Case: 23-1259 Document: 39 Page: 3 Filed: 05/23/2024

GOOGLE LLC v. SONOS, INC. 3

and (3) obviousness in view of Marman 4 and Shoemake. 5

J.A. 134. Relevant to this appeal are grounds 2 and 3.

With respect to ground 2, the Board determined that

claims 2‒4, 7, 10‒12, 16, 18, and 20 would have been obvi-

ous. Decision, 2022 WL 5265117, at *10–11. With respect

to ground 3, the Board determined that claims 1, 2, 4, 5,

7‒12, 14‒16, 18, and 20 would have been obvious but that

claim 3 was not shown to have been obvious. Id. at *12–

17.

In its petition, Sonos argued that a person of ordinary

skill in the art (“POSITA”) would have been motivated to

combine McMillin’s collision-avoidance techniques with

Baker’s network configuration to reduce “the risk of mes-

sage collision, garbling, and corruption.” J.A. 183‒85. In

response, Google argued that Sonos failed to provide an

“explanation for why a POSITA would have combined the

particular feature of McMillin with the hypothetical

Baker/Bruckert combination.” J.A. 335 (emphasis in orig-

inal). Google did not dispute that the network in Baker is

subject to the same collision problem that McMillin ad-

dresses, that McMillin teaches using delays to avoid mes-

sage collision, or that a POSITA would have understood

McMillin’s collision-avoidance techniques could improve

Baker’s system. Compare J.A. 183‒85, with J.A. 335‒37.

The Board found that Sonos and its expert had shown a

close similarity between Baker and McMillin and ad-

vantages for combining these references that demonstrated

why a POSITA would have been motivated to combine the

references. Decision, 2022 WL 5265117, at *10–11. The

Board then concluded that the delay-value claims would

have been obvious over Baker, Bruckert, and McMillin.

4 PCT App. No. WO 00/21053 (“Marman”);

J.A. 1306‒69.

5 U.S. Patent App. Pub. No. 2002/0122413 (“Shoe-

make”).

Case: 23-1259 Document: 39 Page: 4 Filed: 05/23/2024

4 GOOGLE LLC v. SONOS, INC.

Google timely appealed. We have jurisdiction under 28

U.S.C. § 1295(a)(4)(A).

DISCUSSION

Google appeals the Board’s determination of obvious-

ness in grounds 2 and 3 with respect to the delay-value

claims. First, Google argues that substantial evidence does

not support the Board’s finding that a POSITA would have

been motivated to combine Baker and Bruckert with

McMillin for claims 3, 4, 11, 12, and 20. Second, Google

argues that the Board erred in determining that claims 4,

11, 12, and 20 would have been obvious over Marman and

Shoemake because the Board’s determination that claim 3

was not shown to have been obvious required a determina-

tion that the “substantively identical” delay-value claims

were also nonobvious. Appellant’s Br. 28. We address each

argument in turn.

I

Whether a POSITA would have been motivated to com-

bine prior-art references is a factual question that we re-

view for substantial evidence. Intel Corp. v. PACT XPP

Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Sub-

stantial evidence is such relevant evidence as a reasonable

mind might accept as adequate to support a conclusion.”

Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324

(Fed. Cir. 2017) (cleaned up).

Google argues that substantial evidence does not sup-

port the Board’s finding that a POSITA would have been

motivated to combine Baker and Bruckert with McMillin

because Sonos’s motivation to combine is too generic and

“untethered to the specific language of the delay value

claims.” Appellant’s Br. 22. In Google’s view, motivations

to combine must be articulated on a claim-by-claim basis.

Oral Arg. at 1:55‒3:44, No. 23-1259, https://oralargu-

ments.cafc.uscourts.gov/default.aspx?fl=23-1259_0506202

4.mp3. We disagree.

Case: 23-1259 Document: 39 Page: 5 Filed: 05/23/2024

GOOGLE LLC v. SONOS, INC. 5

Google’s argument that Sonos’s motivation to combine

is too generic is not supported by the teachings of KSR.

KSR rejected “rigid rule[s] that limit[] the obviousness in-

quiry” in favor of “an expansive and flexible approach” to

obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550

U.S. 398, 415, 419 (2007). “[T]he analysis need not seek

out precise teachings directed to the specific subject matter

of the challenged claim . . . .” Id. at 418. A motivation-to-

combine “rationale is not inherently suspect merely be-

cause it’s generic in the sense of having broad applicability

or appeal.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797

(Fed. Cir. 2021). Rather, “generic” or “conclusory” analysis

is insufficient when it bears “‘no relation to any specific

combination of prior art elements . . . from specific refer-

ences’ and [does]n’t explain why a skilled artisan would

have combined them ‘in the way the claimed invention

does.’” Id. (emphasis in original) (quoting ActiveVideo Net-

works, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328

(Fed. Cir. 2012)).

For example, in ActiveVideo, the purported motivations

to combine were wholly generic and divorced from any spe-

cific reason why a POSITA would be motivated to make the

proposed combination of prior-art references. There, the

expert merely alleged that a POSITA would have been mo-

tivated to combine prior-art references “to build something

better,” to make a system “more efficient, cheaper, or . . .

ha[ve] more features,” to be “more attractive to your cus-

tomers,” and to “do something new.” ActiveVideo, 694 F.3d

at 1328. Unlike ActiveVideo, Sonos and its expert “indi-

cated precisely how and why a skilled artisan would have

combined the references.” Intel, 21 F.4th at 797. Sonos

proposed how to combine Baker’s network with McMillin’s

collision-avoidance techniques, and there is no dispute that

Baker and McMillin disclose each of the elements of the

delay-value claims. Appellant’s Br. 24‒26; J.A. 335‒37.

Sonos further explained why a POSITA would have been

motivated to combine known collision-avoidance

Case: 23-1259 Document: 39 Page: 6 Filed: 05/23/2024

6 GOOGLE LLC v. SONOS, INC.

techniques from McMillin with Baker’s network—i.e., be-

cause it would reduce “the risk of message collision, gar-

bling, and corruption.” J.A. 184 (citing J.A. 1157 ¶ 391).

Google also argues that Sonos’s proposed motivation is

conclusory, invoking the notion that “knowledge of a prob-

lem and motivation to solve it are entirely different from

motivation to combine particular references to reach the

particular claimed method.” Innogenetics, N.V. v. Abbott

Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008); see also Appel-

lant’s Br. 24. In Innogenetics, we concluded that expert tes-

timony that “merely list[ed] a number of prior art

references and then conclude[d] with the stock phrase ‘to

one skilled in the art it would have been obvious to perform

the [claims]’” was insufficient to support a determination

of obviousness. 512 F.3d at 1373. We have distinguished

the facts of Innogenetics, which involved wholly conclusory

motivations to combine, from motivations providing more

than mere listings of the prior art and conclusions of obvi-

ousness. See Meyer Intell. Props., Ltd. v. Bodum, Inc., 690

F.3d 1354, 1375 (Fed. Cir. 2012) (finding expert report not

conclusory where “one skilled in the art would have been

motivated based on familiarity with the prior art” and

“common sense”); Norgren Inc. v. ITC, 699 F.3d 1317, 1327

(Fed. Cir. 2012) (“[T]he Commission properly found the

claims obvious based on evidence of known problems and

an obvious solution.”). Indeed, KSR stated that “[o]ne of

the ways in which a patent’s subject matter can be proved

obvious is by noting that there existed at the time of inven-

tion a known problem for which there was an obvious solu-

tion encompassed by the patent’s claims.” 550 U.S. at

419–20. The motivations to combine here are unlike those

in Innogenetics. Not only was there knowledge of the prob-

lem and motivation to solve it, but Sonos and its expert ex-

plained that Baker and McMillin have similar network

structures, that both networks (absent collision-avoidance

techniques) would suffer from the same problem, and that

Case: 23-1259 Document: 39 Page: 7 Filed: 05/23/2024

GOOGLE LLC v. SONOS, INC. 7

McMillin disclosed solutions to the collision problems.

J.A. 183–85; J.A. 1156‒57 ¶¶ 383‒90.

Google further argues that motivations to combine

must be presented on a claim-by-claim basis. We have

never mandated that such a rigid motivation-to-combine

analysis is necessary in every case. “[T]he law has always

evaluated the motivation to combine elements based on the

combination of prior art references that together disclose all

of the elements of the invention.” Gen. Elec. Co. v. Ray-

theon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020)

(emphasis in original). There is no need to establish a mo-

tivation to combine on a claim-by-claim basis when the pro-

posed motivation logically applies to all of the claims at

issue, as Sonos’s proposed motivation for the delay-value

claims does here. See J.A. 183‒85 (applying the same mo-

tivation to combine to all the delay-value claims). In this

context, the Board’s findings are supported by substantial

evidence. Decision, 2022 WL 5265117, at *10–11 (citing

J.A. 1156‒57 ¶¶ 383‒90).

The Board’s finding of a motivation to combine Baker

and Bruckert with McMillin is supported by substantial ev-

idence. We thus affirm the Board’s determination that the

delay-value claims would have been obvious over Baker,

Bruckert, and McMillin.

II

Google also appealed the Board’s determination that

claims 4, 11, 12, and 20 are unpatentable in view of Mar-

man and Shoemake. Because we affirm the Board’s deter-

mination of unpatentability on these same claims in view

of Baker, Bruckert, and McMillin, we do not consider

Google’s arguments regarding Marman and Shoemake.

CONCLUSION

We have considered Google’s remaining arguments and

find them unpersuasive. For the foregoing reasons, we

Case: 23-1259 Document: 39 Page: 8 Filed: 05/23/2024

8 GOOGLE LLC v. SONOS, INC.

affirm the Board’s determination that claims 3, 4, 11, 12,

and 20 are unpatentable.

AFFIRMED