December 1, 2023

U.S. District Court docket Decide William Alsup dominated that two Sonos patents behind a $32.5 million damages award are unenforceable. Accordingly, he ordered that the damages award be tossed out.

“The essence of this order is that the patents issued after an unreasonable, inexcusable, and prejudicial delay of over 13 years by the patent holder, Sonos,” the choose writes in his ruling. “Sonos filed the provisional utility from which the patents in go well with declare precedence in 2006, but it surely didn’t file the functions for these patents and current the asserted claims for examination till 2019. By the point these patents [were] issued in 2019 and 2020, the trade had already marched on and put the claimed invention into apply.”

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This order casts the unique timeline of this story into a brand new mild. We had been instructed that Google approached Sonos for a partnership and that after Sonos defined how its entire home audio applied sciences and good audio system labored, Google then walked away from the deal and copied the Sonos options in its personal services and products. That narrative stays unchanged, however right here’s the nuance: Google approached Sonos for a partnership in 2014, which was 5 years earlier than Sonos filed its patents. So regardless of the circumstances, Sonos was attempting to play the patent system towards Google, most likely to pressure the partnership to fruition.

Decide Alsup doesn’t mince phrases in describing this act. Sure, Sonos invented the applied sciences in query, but it surely by no means thought to patent any of it till Google confirmed up after which left.

“This was not a case of an inventor main the trade to one thing new,” he writes. “This was a case of the trade main with one thing new and, solely then, an inventor popping out of the woodwork to say that he had give you the concept first — wringing contemporary claims to learn on a competitor’s merchandise from an historical utility. Even when the provisional utility Sonos filed in 2006 or the corresponding nonprovisional utility Sonos filed in 2007 had truly disclosed the invention, that will be all of the extra motive to [rule that] Sonos waited too lengthy to assert it.”

The 55-page ruling offers many particulars about what Sonos did and didn’t invent, and when, however the damning bits, after all, issues its makes an attempt so as to add new options to prior patents after the very fact, with the categorical purpose of tripping up Google. What’s not clear is whether or not Google acted in good religion: By the point it approached Sonos for a possible partnership, the smartphone period had begun, and it had launched its Google Play Music service. Google was apparently “fawning” over Sonos throughout this time, the choose famous, and so Sonos opened the kimono, so to talk, and spilled the beans on its proprietary secrets and techniques.

It’s potential—probably, even—that Google aggressively did copy a minimum of a few of Sonos’ work: The agency got here again to Sonos later and supplied to show the partnership on its head by letting Sonos be part of its “Forged for Audio” program, which was backed by plenty of model new Google patents associated to current and coming options, a few of which Sonos had beforehand shared (and, to be truthful, some that had been new). However Sonos, in a manner, was victimized as a lot by its naivete because it was by Google, a strong tech big that maybe higher understood the right way to use the patent system to its benefit.

“Sonos was responsible of unreasonable and inexcusable delay in its prosecution of the patents in go well with,” Alsup continues. Sure, Sonos had invented a few of the applied sciences that Google later used, however “the sooner [Sonos patent] functions by no means disclosed the invention.” In brief, the unique Sonos patents on the coronary heart of this case had been very slim and Sonos tried to bulk them up after Google had walked away from its partnership.

Regardless of the particulars, in an excellent world these companies would nonetheless accomplice to make sure that Google’s companies work correctly with the Sonos ecosystem and vice versa. They share many purchasers, and any partnership would solely improve the quantity of people that might combine and match between the 2. However this ruling has actually muddied the waters, which may very well be a difficulty for any future deal: The place Sonos clearly had the ethical excessive floor earlier than, now it’s not so clear. And whereas nobody likes to see Massive Tech wipe out one more small participant, Sonos has just about pulled a Netscape right here in that a few of its personal errors are simply as problematic as something the competitors did.

I’m curious what’s subsequent on this case.